Introduction Patents and utility models Industrial designs Changes applicable to both patents and industrial designs

Introduction

 

Turkey recently adopted the new Code of Industrial Property 6769, which repeals and replaces the decree-laws on patents, utility models, trademarks, service marks, industrial designs and geographical indications. The new code was accepted by Parliament on December 22 2016 and entered into force on January 10 2017, following publication in the Official Gazette.

As the new code contains provisions regarding the internal organisation of the Turkish Patent Institute (TPI) and the profession in general, it is set to change the Turkish IP landscape profoundly, as it affects the legislative, administrative and professional components of the landscape.

This update examines some of the major changes introduced by the new code.

Patents and utility models

Post-grant opposition proceedings A third party may file an opposition against a granted patent within six months of its publication. Once an opposition has been filed, the TPI will notify and invite the patentee to submit its opinion or amend its patent application. Both the opposition and the patentee's opinion and amendment will be examined by a board to be established at the TPI. The composition of the board and other procedures will be clarified with the implementing regulations.

Biotech patents The IP Code provides some exceptions to the general concept of biotechnological inventions. According to the code, simple discoveries of human gene sequences or processes for cloning human beings are not patentable subject matter. If interpreted differently, the provision allows a biotechnological invention which falls outside the scope of the exception to be patentable.

Second medical use patents The IP Code is silent concerning the patentability of second medical use inventions, despite a recent Supreme Court ruling that second medical use inventions are patentable. Turkey acknowledges the protection of second medical use patents validated through the European Patent Convention, to which it is a party.

Abolition of seven-year patent system The IP Code abolishes all provisions relating to the short seven-year patent term which could be obtained without substantive examination. Under the new regime, it is compulsory to request substantive examination; if no such request is made, the patent application will be withdrawn. Therefore, Turkey is expected to provide a stronger patent framework with improved quality as the utility model system remains in effect, particularly for small and medium-sized enterprises.

Utility model system re-adapted According to the IP Code, no utility model certificate will be granted for:

  • biotechnological inventions;
  • chemical processes and products obtained by such processes, or chemical products;
  • pharmaceutical processes and products obtained by such processes, or pharmaceutical products; and
  • processes and products obtained by such processes.

The code introduces a compulsory novelty search for utility model applications, with the possibility of the applicant filing amendments during the registration proceedings. Post-grant opposition proceedings will not be available for utility models.

Employee invention system for universities The code includes a new provision to remove the so-called 'professors' privilege'. This means that all inventions made by scientific staff (including both regular and PhD students) in their employment function are deemed to belong to the university, provided that certain conditions are met.

Burden of proof in process patents The previous decree-law was confusing in regard to matters where the burden of proof should shift to the defendant. The new IP code removes the contradiction. According to the new text, the court has discretion to shift the burden of proof where the infringed process is not related to a new patented product, whereas if the infringed process relates to a new product, the burden of proof will rest with the defendant.

Industrial designs

Submission of description of designs Submission of the description of an industrial design during the prosecution period is now optional. The description no longer has to be filed for prosecution purposes and the information provided in the description will not affect the scope of protection.

Examination for novelty Designs which are not novel will be refused ex officio. The so-called 'examination of novelty' stage is expected to be introduced within the formal examination phase of a design application.

Invisible parts of complex product The code explicitly states that only visible parts of a complex product will be protected, provided that the visible parts meet the novelty and individual character criteria

Spare parts of complex product According to the previous code, three years after a design was first made available to the public the owner of the registered design cannot assert its rights regarding a visible part of a complex product, provided that the visible part is used for repairs and is not deceptive as to the source of origin.

The new code, while maintaining this provision, has introduced a new derogation by stating that the three-year period does not apply if the protected spare part design is mentioned among the list of equivalent parts issued by the Ministry of Science, Industry and Technology.

Shorter opposition period The post-grant opposition period of six months has been shortened to three months. This will reduce the total registration time to less than one year.

Non-registered industrial design rights A design will be protected as a non-registered design right only if it was first made available to the public in Turkey. The protection term is three years from the date on which a design is first made available to the public.

Enforcement of non-registered designs Designs which are disclosed to the public for the first time in Turkey are protected as non-registered designs for three years from the date of first disclosure. The rights derived from design protection can be used for non-registered designs to prevent third party use of identical or similar non-registered designs.

Changes applicable to both patents and industrial designs

International exhaustion of rights The code replaces the existing national exhaustion principle with the international exhaustion of rights principle.

Registered IP right no longer valid defence against infringement claims The code codifies a common provision by which trademark, patent and industrial design registration rights do not constitute a legitimate defence against an infringement claim brought by the owner of the earlier IP right. This provision evidently requires an intensive clearance search – even where registration exists – before the use of an IP right.

Criminal provision While the code introduces criminal provisions for trademark infringements, there are no criminal provisions concerning patents or industrial designs.

For further information on this topic please contact Kerim Yardimci or Okan Çan at Deris Patents and Trademarks Agency by telephone (+90 212 252 6122) or email (kyardimci@deris.com.tr or okan.can@deris.com). The Deris website can be accessed at www.deris.com.tr.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.