All questions

Types of patent

Although the new IP Code provides exclusive rights for two types of rights – namely, patents and utility models – there are currently three types of exclusive rights regarding the patents that are subject to enforcement remedies.

National patents are patents filed in Turkey and registered by the Turkish Patent and Trademark Office (TurkPatent) for 20 years. It is possible to oppose national patents within six months upon the publication of the grant decision in the official patent bulletin of TurkPatent.

International patents that designate Turkey are deemed national Turkish patents valid for 20 years from the application date.

Utility models require the existence of novelty and industrial applicability but do not require the criterion of inventive step for grant. The term of utility models is 10 years starting from the filing date.

Short-term patents are patents granted without undergoing substantive examination for a period of seven years in accordance with the repealed Decree-Law 551 on the protection of patents. Despite the fact that all provisions with regard to short-term patents have been abolished by the IP Code, patents that were granted according to the former Decree-Law are still alive and enforceable.

Supplementary protection certificates (SPCs) are not afforded protection in Turkey.

Substantive law

i Infringement

The commercial use of a patented invention and its embodiments are defined as infringing activities in the IP Code, which stipulates that the partial or complete imitation of products embodying the patented invention is an act of infringement against the patent rights of the patentee.

The IP Code specifies infringing parties as persons who know or should have known that the products in question are imitations. By doing so, end users and consumers are excluded from the acts of infringement. Two elements, the commercial purpose and benefit of third parties, are sought in an infringement. This being said, the IP Code provides that the following actions constitute acts of infringement:

  1. distribution, sales, importation or the commercialisation in any other way of products embodying the patented invention;
  2. keeping such products in possession for commercial purposes;
  3. use of the patented product by means of making the patented invention applicable; and
  4. making proposals to establish an agreement related to a patented product.

The IP Code introduces a separate provision with regard to the acts of infringement against process patents. The following actions of third parties who know or should have known that the process is being used without the consent of the patentee are deemed to be infringing:

  1. the use of the patented method;
  2. the sale, distribution, importation or commercialisation in any other way of the products obtained directly by the patented method;
  3. keeping products obtained directly by the patented method in possession for commercial purposes;
  4. the use of the patented method by means of making the patented invention applicable; and
  5. making proposals to establish an agreement related to a patented method.

The IP Code continues to consider the following actions as infringement: the usurpation of a patent, and the expansion or transfer of rights granted by the patentee through a contractual or compulsory licence agreement without the consent of the right holder.

As indicated above, preparatory acts, such as making proposals, are also deemed to be infringing actions. The preparatory actions should be evidenced by substantial documents to constitute a serious basis for infringement claims.

Any party taking part in the commercialisation of the patented product in Turkey is liable for infringement. Importers and exporters of infringing goods, suppliers and any person who provides parts of the patented product in a way to apply the patented invention can be held liable for infringement.

Should the infringing party be a legal person, the Turkish Commercial Code requires fault and bad faith to hold the directors or the members of the entity's executive bodies, or both, liable. However, the liability would rest only on the legal entity in case of an infringement. This is a problem in the execution of the court decision for the payment of the compensation if the infringing entity goes bankrupt or liquidates itself upon being sentenced to pay compensation to the patentee.

ii Doctrine of equivalents

The claims define the scope of protection of a patent application or a patent, pursuant to the IP code. The IP Code rules that the claims are construed in the light of the applicant's declarations and statements during the examination proceedings and the validation of the patent. In patent infringement proceedings, the court will also take into account the doctrine of equivalents. In that regard, the construction of the claims is not limited to the literal meaning of the words used in the claims.

An alleged patent infringement is first examined by comparing the properties of the product or process with the literal meaning of the words used in the claim. If that does not reveal an infringement, the court will evaluate whether the alleged product or process performs substantially the same function, in the same way, leading to the same result, as the claim – the purpose of the claims of the patent being to provide a reasonable degree of certainty to third parties and applicants, while also protecting the patentee. In that regard, the IP Code provides that claims should not be expanded to cover ideas that the inventor had conceived of but that were not included in the claims, and that the claims should cover the features expected to emerge from the reading of the description and drawings by a person skilled in the art.

Contributory infringement

Article 86 of the IP Code, regarding contributory infringement, reads as follows:

(1) The right holder of a patent is entitled to prevent third parties, from handing over to persons unauthorised to work with the patented invention, elements and means related to an essential part of the invention, subject matter of the patent, and rendering that which renders possible the implementation of the patented invention possible. In order that this provision may apply, the concerned third parties have to know, that such elements and means are sufficient for putting the invention to use and that they know, that they will be used to such effect or that the circumstances render such situation sufficiently evident.
(2) The provisions under Paragraph one of this present Article shall not apply, when the elements or means referred to in Paragraph one of this present Article are products commonly to be found on the market, unless third parties incite the unauthorised persons concerned to commit such (prohibited) acts.

First, two conditions are to be met according to Paragraph 1 – the offered 'means and elements' must be essential features of the invention for infringement to be made out. Second, for liability to be established, third parties that offer these elements and means should be aware that they render possible the implementation of the invention.

In respect of 'means and elements' mentioned in Paragraph 1, which are 'commonly to be found in the market', Paragraph 2 introduces a third condition in that third parties are required to have incited the unauthorised person to commit infringement.

Process patents

The protection provided by a process claim extends to the products directly obtained by the process. The sales, use or importation of such products is a patent infringement.

Burden of proof in process patents

Where the patent concerns a process for the production or preparation of a product or a substance, the court may require the defendant to show that the alleged product has been produced without infringing the patented process.

Where the patented invention covers the process for the production or preparation of a new product or substance, the defendant is deemed to have produced the alleged product with the patented process. The burden of proof rests on the defendant to show that the product concerned has been produced by a different process than the patented one.

iii Invalidity and other defencesInvalidity

Besides lack of novelty, inventive steps and industrial applicability, patents can be invalid on the following grounds:

  1. Lack of sufficiency: the description, claims, and the drawings referenced in the description or the claims, do not explain the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
  2. Added subject matter: the subject matter extends beyond the scope of the application as filed or beyond the scope of the earliest application, where the patent has been granted on a divisional application filed pursuant to Article 91 or on a new application filed pursuant to Article 110 (after the court's final decision ruling that the applicant does not have the right to claim a patent).
  3. Subject matter that is not patent eligible: if the subject-matter of the patent falls within several categories defined by Article 82 of the IP Code, as not being regarded as inventions:
    • discoveries, scientific theories and mathematical methods;
    • plans, rules or methods regarding mental activities, business activities or games;
    • computer programs 'as such' (but computer-implemented inventions in the sense of the EPC are patentable in Turkey);
    • aesthetic works, literary and artistic works, as well as scientific works; and
    • presentation of information.

In addition, Article 82(3) of the IP Code excludes the following inventions as not patentable:

  1. inventions against public order or morality (although the prohibition of the commercial use of inventions by means of legislation does not mean that it is against public order or morality);
  2. plant or animal varieties or essentially biological processes (meaning the production of plants or animals consisting entirely of natural phenomena such as crossing or selection) to produce plants or animals, excluding microbiological processes (meaning any process involving or performed upon or resulting in microbiological material) or the products thereof;
  3. all therapeutic diagnostic and surgical methods to be applied to the human or animal body (this exception for therapeutic, diagnostic and surgical methods does not apply to products, particularly substances and compositions used in these methods);
  4. the human body, including the human body at the various stages of its formation and development and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
  5. processes for cloning human beings;
  6. processes for modifying the germ line genetic identity of human beings;
  7. uses of human embryos for industrial or commercial purposes; and
  8. processes for modifying the genetic identity of animals that are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from these processes.
Compulsory licence

According to the IP Code, compulsory licences should be granted in the following circumstances:

  1. for the export of pharmaceutical products to address public health needs in other countries (the basis of this requirement is the Protocol amending the TRIPS Agreement – Additional Article 31 bis);
  2. where it is not possible to develop a new plant variety without infringing a patent;
  3. where actions have resulted in a limitation or violation of competition rules (Article 129/1e) (under Article 93 of the repealed Decree-Law No 551, was made of 'unfair competition'), the request for the compulsory licence can be made to the courts, or in the case of limitation or violation of competition rules, to the Competition Board;
  4. where the use of the patent is not sufficient to satisfy the requirements of the national markets;
  5. the failure to use the patent within the statutory time of three years from the publication of the grant decision or four years from the date of request, whichever is later; and
  6. the discontinuance of use of the patent without a justifiable reason for an uninterrupted period of three years.
Bolar exemption

Article 85 of the IP Code on the scope and limits of a patent right provides under Paragraph 3 that 'activities for trial purposes involving a patented invention, including registration of the pharmaceutical as well as tests and trials required for registration' are exempted from patent protection.

The motivation of this provision explains that this enables the generic drug providers to launch their products just after the expiry of the patent term without waiting for the regulatory proceedings.

Precedent decisions ruled that filing an application for obtaining a marketing authorisation is deemed within the scope of the Bolar exemption and would not constitute patent infringement.

Preparation of a prescription

The use of medicines prepared in pharmacies without mass production for the preparation of a prescription and actions related to such medicines is exempted from patent infringement.

Use of breeder's rights for new plant varieties

The use of the propagating material of the harvest obtained by planting a patented product sold by the patent holder upon his or her consent or acquired in another commercial way by a small farmer is stipulated not to infringe the patent rights.

Use of animal breeding or other reproductive material

Farmers can use animal breeding or other animal reproductive material sold by the patent holder, or upon his or her consent, or otherwise acquired in another commercial way, for agricultural purposes. This right extends to the use of animals or other animal reproductive material for the purpose of maintaining the farmer's own agricultural activity. Procedures and principles with regard to the use of such right have been laid down in the implementing regulation.

According to Article 118 of the Implementing Regulation of the IP Code, the main aim for such a use should be for the continuation of the farmers' agricultural activity and not in the sense of any commercialisation of the reproductive cells, semen or embryo of the patented animal. The milk and meat production from the patented animal are not deemed to be the commercialisation of the patented animal but as the produce of agricultural activity of the farmer. Thus, the reproduction of the patented animal on the farm for the use of the farmer is also not deemed to be commercialisation of the patented animal.

Exhaustion of rights

The patent rights of a patentee are exhausted once they are put on the market by the right holder. The former contradiction between the law and jurisprudence was removed by the IP Code, which introduced the principle of international exhaustion of rights.