Applying for a patent
What are the criteria for patentability in your jurisdiction?
In order to be patentable, an invention must be novel, include an inventive step and be industrially applicable.
What are the limits on patentability?
According to the Intellectual Property Law, the following are considered non-inventions:
- scientific discoveries and theories;
- mathematical methods;
- schemes, methods and rules for performing mental acts, playing games and doing business;
- computer programs;
- literary, scientific and aesthetic works or creations; and
- presentations of information.
Further, under the Intellectual Property Law, the following inventions are considered non-patentable:
- inventions that are contrary to public order or morality;
- inventions concerning plant or animal varieties or essentially biological processes for the production of plants or animals, excluding the microbiological processes or the products thereof;
- diagnostic methods that are practised on humans or animals and all such treatment methods, including surgical methods;
- the human body at various stages of its formation and development and the discovery of one of its elements, including the sequence or partial sequence of a gene; and
- the use of human embryos for industrial or commercial purposes, including processes for:
- cloning human beings;
- modifying the germline or genetic identity of human beings; and
- modifying the genetic identity of animals in ways that are likely to cause them suffering without any substantial medical benefit to humans or animals.
To what extent can inventions covering software be patented?
Under Article 82 of the Intellectual Property Law, computer programs are not considered inventions. Therefore, inventions that concern only software cannot be patented. However, software-related inventions can be patented in Turkey providing that they meet all patentability requirements.
To what extent can inventions covering business methods be patented?
Article 82 of the Intellectual Property Law establishes that business methods are not inventions. However, if an invention concerns a business method that has technical aspects and meets the patentability criteria, it can be patented.
To what extent can inventions relating to stem cells be patented?
The Intellectual Property Law is silent about whether stem cells can be patented. Therefore, it can be said that patenting of stem cells is not prohibited. However, the following inventions have been defined as non-patentable:
- inventions that are contrary to public order or morality;
- the human body at various stages of its formation and development; and
- the human body and the simple discovery of one of its elements, including the sequence or partial sequence of a gene.
Consequently, as long as an invention covers all of the patentability criteria, it can be patented.
Are there restrictions on any other kinds of invention?
Does your jurisdiction have a grace period? If so, how does it work?
The grace period in Turkey is 12 months before the application or priority date. Accordingly, Article 84 of the Intellectual Property Act defines the disclosure types made within 12 months before the application or priority date that do not affect novelty as follows:
- disclosure by the inventor;
- disclosures by an office authorised to receive patent applications if:
- the disclosed information was in another application by the same inventor and the information was required to be disclosed; and/or
- a third party discloses information directly or indirectly obtained from an inventor without their approval or knowledge; or
disclosures by a third party which directly or indirectly obtains information from the inventor.
What types of patent opposition procedure are available in your jurisdiction?
Post-grant opposition proceedings are set out in the Intellectual Property Law. Accordingly, opposition proceedings start as of the grant of a patent. Third parties may file an opposition within six months of the publication date of a patent being granted. Opposition can be based on the following grounds:
- the subject matter has no patentability criteria;
- the patent does not disclose sufficient details of the invention to enable a person skilled in the art to apply it in practice; or
- the patent’s subject matter extends the scope of the first version of the filing.
Apart from oppositions, are there any other ways to challenge a patent outside the courts?
Third parties can file opinions (third-party opinions) regarding the patentability of a patent application from the date of its application. However, third parties will not be considered parties to Trademark and Patent Office proceedings.
How can patent office decisions be appealed in your jurisdiction?
If a granted patent is subject to post-grant opposition by a third party, the Trademark and Patent Office notifies the patent holder according to the Article 99 of the Intellectual Property Law. The patent holder has a right to file its response against the opposition. The post-grant opposition and the response are examined by the Re-examination and Evaluation Board and the board’s decision is final. Any final Trademark and Patent Office decisions can be subject only to a cancellation action before the Ankara Civil IP Court within two months as of the notification of the decision.
Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?
In a smooth-running proceeding, obtaining a patent takes approximately three years after filing an application. The cost will vary between €4,000 to €6,000 (including official fees). This cost does not include the application drafting.
Enforcement through the courts
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?
The most effective way for a patent owner to enforce its rights is to initiate an infringement action against the infringers before the competent court. Said rights can be enforced before the specialised IP courts.
Such infringement actions are generally started with a preliminary injunction claim and the discovery and determination of evidence, tools which are set out in the Civil Procedural Law. To seek injunctive relief, the proceedings generally start by using these tools, which are effective during infringement actions, to:
- reach the final result that the plaintiff hopes to achieve; or
- collect evidence for complex patent cases.
These tools can be used either before or during trial.
With an infringement action, plaintiffs can claim damages or request:
- the destruction of infringing products;
- the confiscation of manufacturing tools; or
- the publication of the judgment.
What scope is there for forum selection?
The specialised IP courts can handle IP-related lawsuits. However, IP courts exist only in larger cities (ie, Istanbul, Ankara and Izmir). If there is no IP court in a city, the Third Chamber of the Civil Courts of First Instance (or the First Chamber where fewer than three chambers exist) are entitled to handle such lawsuits.
Conversely, Article 156 of the Intellectual Property Law sets out rules on court jurisdiction.
Jurisdiction is determined on the following basis:
- If the plaintiffs reside in Turkey, the courts in the following places have jurisdiction:
- where the plaintiff is domiciled; or
- where the infringement takes place (or the places affected by the infringing acts).
- If the plaintiff is not domiciled in Turkey, the court where the relevant registered patent attorney resides has jurisdiction. If there is no registered attorney, the court where the Trademark and Patent Office is located has jurisdiction.
Further, if a city has more than one IP court, the court that will hear a patent case is determined automatically by the distribution offices available at the court houses.
What are the stages in the litigation process leading up to a full trial?
In order to commence proceedings, a plaint petition must be filed. Where there is a preliminary injunction and the discovery and determination of evidence requests as a first step, the court will decide whether such requests should be granted.
After this step, the exchange of petition starts, whereby the plaintiff’s petitions and responses are exchanged with the defendant’s. This phase usually takes three months. Once completed, the judge determines a hearing date.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?
The Civil Procedural Law sets out different terms for civil judgments. Some of the terms are peremptory and extensions are not possible. However, other flexible terms can be exploited to prolong the ordinary terms of proceedings. In this manner, defendants can ask for time extensions to submit responses and evidence.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?
Filing a separate or counter action for invalidity is the most common strategy used in the course of infringement actions. When an infringement action is filed, defendants can raise patent invalidity as a defence and file a counteraction. Counteractions must be filed within defendants’ response deadlines. However, defendants can also challenge the basis of a patent at any time separately from the ongoing infringement action and use it as a defence.
What level of expertise can a patent owner expect from the courts?
Article 156 of the Intellectual Property Law sets out that specialised IP courts have jurisdiction over all claims that arise from said law.
The judges appointed in IP courts have a sufficient understanding of the Intellectual Property Law, even though they have no technical background. To better understand the technical merits of a complex case, judges commonly appoint an expert panel.
Are cases decided by one judge, a panel of judges or a jury?
According to the Civil Procedural Law, one judge is appointed for each IP court. Jury proceedings are not applicable under the Turkish legal system. Cases are decided by one judge.
Regional courts and the Court of Appeals have a minimum of three judges.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials do not exist under the Turkish legal system.
What role can and do expert witnesses play in proceedings?
While judges have a significant understanding of the Intellectual Property Law, they do not have a technical background and commonly appoint experts to better understand the technical merits of a case. The courts can decide to conduct an expert examination either ex officio or on request of one of the parties.
Experts are prohibited from declaring an opinion on the legal issues being decided on by the court. They are expected only to declare their technical opinion on the questions posed to them.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
The doctrine of equivalents is applied in Turkey. When determining the scope of protection, all elements equivalent to those defined in a claim are considered (Article 89 of the Intellectual Property Law). Where an element performs the same function and provides the same result as the element set out in a claim, that element is accepted as equivalent.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
As IP rights can be irreparably and irrecoverably damaged by third-party acts, injunctions play a significant role in IP litigation. Injunctions are effective tools in patent litigation to preserve the results which plaintiffs hope to achieve.
The legal framework and criteria for injunctions in Turkey are outlined by the Civil Procedural Law and the Intellectual Property Law.
Injunctions can be obtained before or during a trial. To obtain an injunction, the requesting party must prove to the court's satisfaction that:
- irreparable harm will arise if the injunction is not granted; or
- the outcome which the requesting party seeks in its main action will be unlikely unless the injunction is granted.
The IP courts are conservative in their rendering of preliminary injunction decisions. On receipt of a preliminary injunction request, a common approach for a court during patent conflicts is to use an expert witness to evaluate the technical merits of the conflict at hand. When the expert's report is prepared, the court will issue its decision about the preliminary injunction request. However, if the court decides to notify the counterparty and hear its defence, the expert report will be delivered to the parties, which have two weeks to submit their response. In this case, the court will issue its decision after receiving the parties' responses. The courts may accept preliminary injunction requests in return for payment of a guarantee, which may vary according to the value of the patent and the parties’ economic situation.
How are issues around infringement and validity treated in your jurisdiction?
In principle, infringement and invalidity actions are separate actions and are handled separately. However, since invalidation actions are commonly used as defence tools by defendants, they can be handled by the same court where invalidation actions are filed as counteractions, or the court decides for the consolidation of the case files.
If there are parallel cases between the same parties, in principle, the court which waits for the outcome of an invalidation may take an action before proceeding with an infringement action.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
The decisions rendered by other courts are not directly binding; however, they set precedent to a certain extent. Further, the courts must evaluate the sui generis nature of each case.
Damages and remedies
Can the successful party obtain costs from the losing party?
According to the Civil Procedural Law, a losing party bears the judicial costs and the fixed attorney fee. To recover other costs, the requesting party must file another lawsuit.
What are the typical remedies granted to a successful plaintiff?
Typical remedies granted to successful plaintiffs include:
- compensation for damages (moral, material and reputational);
- the destruction of infringing products;
- the confiscation of manufacturing tools; and
- the publication of the judgment.
How are damages awards calculated? Are punitive damages available?
As per the Intellectual Property Law, ‘damages’ means actual damage and lost profits. ‘Actual damage’ is the net decrease in the requesting party’s assets. The requesting party may also ask for lost profits, which are calculated based on one of the following methods set out in the Intellectual Property Law:
- the income which the patent owner would have generated if the infringing party’s competition had not existed;
- the infringer’s income; or
- the amount that the infringer would have paid as an appropriate licence fee had the parties entered into a licensing relationship.
Punitive damages are not available under Turkish law.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
A permanent injunction can be granted only at the end of a judgment. Such injunctions can be enforced only when a decision becomes final.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
First-instance court judgments take approximately 18 months to two years in straightforward patent infringement cases. In complex patent cases, this procedure can take longer. Following up files and interventions closely when needed can be helpful to expedite proceedings.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Total judicial costs are approximately €3,000 to €4,000 in straightforward cases without compensation claims. Professional attorneys’ fees may vary depending on the complexity of a case.
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?
The losing party is entitled to appeal a first-instance decision. There are two levels of appeal in Turkey. First-instance court decisions are appealed before the regional courts. In principle, decisions rendered by the regional appellate courts can be appealed before the Court of Appeal. Proceedings before the regional courts take approximately 18 months. Court of Appeal examinations take an additional two years.
Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?
Arbitration, mediation and off-court settlements are possible alternative dispute resolution methods; however, they are not as effective as court proceedings.