Lifesciences Patent Litigation & Remedies

Turkiye has a specialized court system and provides for all commonly known civil law measures to enforce or defend against IP claims.

The court system in Turkiye for the enforcement of IP rights includes specialized courts and procedures.

The specialized courts for IP enforcement in Turkiye are the Intellectual and Industrial Property Rights Civil Courts. These courts have exclusive jurisdiction over civil cases relating to patents, trademarks, industrial designs, geographical indications, and unfair competition. They are located in Istanbul, Ankara, and Izmir, and have the authority to hear and decide cases related to IP rights and infringements, as well as to issue preliminary and permanent injunctions and orders for the seizure and destruction of infringing goods.

Disputes are first brought before the first instance courts located in almost every city and their counties in Turkey. Decisions of these local courts can later be appealed before the Regional Courts of Appeal. An appeal is heard by a panel of three non-technical judges. The outcome from the Regional Court of Appeal may either be to uphold the first instance decision or to overturn the first instance decision and to render a new decision. The Regional Court of Appeal may hold hearings during the appeal and refer the file to a new panel of experts, if it is thought that the matter needs further examination.

Decisions of the Regional Court of Appeal are appealed to the Supreme Court. The Supreme Court has a special chamber for IP matters and constitutes five non-technical judges. A decision approved by the Supreme Court is the final decision and cannot be appealed. If a decision is reversed by the Supreme Court, the case file is referred to the Court of First Instance or the Regional Court of Appeal (whichever decision is reversed).

Available remedies for patent infringement include monetary damages, preliminary and permanent injunctions.

1. Permanent Injunctions

Under the Civil Procedural Law and the IP Code, a patent holder can request permanent injunctions, for instance to stop the offer for sale and marketing of infringing products to third parties, as well as seizure and destruction of infringing products after conclusion of the infringement action. Moreover, the confiscation of infringing products can be requested. Measures to prevent continuation to infringement especially changing shape/appearance of the seized products, or machinery/apparatus, erasing trademarks on the products, their destruction where IP infringement is unavoidable.

Assignment of the property rights on confiscated infringing products and the deduction of the value of such products, devices and machines from the total amount of the compensation determined by the court.

Moreover, the publication of the court decision in daily newspapers or by means of similar mediums in whole or as a summary can be resorted to.

The new IP code strengthens the possibility of requesting simultaneously the “determination and prevention of infringement” from the court as part of permanent injunction order.

2. Preliminary Injunctions

A preliminary injunction can be requested at any time during proceedings in case of an imminent threat of serious of irreparable damage. Preliminary injunctions ensure the effectiveness and enforceability of the court’s final judgment, by:

• ▪️ stopping the infringing acts;

• ▪️ seizing the infringing products that have been produced or imported, as well as the means of their production or the means of performing the patented method within Turkish territory (including customs, free port or free trade areas), and holding such infringing products in custody; and

• ▪️ ordering the posting of security or a guarantee for indemnification of any potential damages to the defendant.
• The right owner can request a preliminary injunction to stop the unauthorized use, including the sale, offer for sale, use, holding in hand, import and export of the infringing goods. The right owner may also request the court to order the defendant to provide a financial guarantee to secure its compensation claim for the duration of the proceedings. The right owner shall evidence that the infringement is performed or that there is a serious and effective preparation to perform such infringement. The courts first seek to understand and determine whether the infringing activity falls within the scope of third-party activity and may refer the case to a panel of experts for an initial evaluation of the asserted infringement. Where applicable, specialized IP courts will order the defendant to deposit a guarantee to secure the plaintiff’s damages (on the plaintiff’s request) at the outset of the infringement action.

Injunctions may include the activities within the borders of Turkey, including the areas such as customs and free port or zones.

3. Compensation

The persons committing the acts of infringement shall be liable for indemnifying the loss of patent holder. There are three types of damages that can be claimed in patent infringement actions:

• ▪️ Material damages,
•      ▪️ Non-realized income and
•      ▪️ Effective loss
• ▪️ Reputational damages, and

• ▪️ Moral damages
• 
  

• Material damages

Material damage suffered by the patent holder includes not only the value of the effective loss, but also the income not realized due to the infringement. The non-realized income is calculated in accordance with one of the following evaluation methods depending on the preference of the plaintiff:

1. 1. According to the probable income that the right holder might have generated if the competition of the infringer did not exist,

2. 2. According to the net income generated by the infringer of the industrial property right, or

3. 3. The license fee that would have been paid if the infringer of the industrial property right would have lawfully utilized this right under a licensing contract.

In method (i), the calculation of the compensation would be conducted by the evaluation of the trade records of the patent holder. Method (ii) requires the evaluation of the trade records and books of the infringer in order to calculate the net income of the infringer and in method (iii), the court requests an exemplary license agreement to be submitted by the right holder if the patent in dispute is subject to licensing.

In practice, the calculation of damages entails certain difficulties in providing documentary evidence of the damages incurred by the plaintiff. The most important documents relate to the defendant’s commercial and accountancy records -which are often improper and incomplete and seldom accurately reflect its economic activity. Considering the risk of damages being set at an amount lower than the actual income gained by the defendant from the infringement, it is advisable to devise a strategy which encourages the parties to settle the matter without resorting to a lengthy action.

For the first two options the court is entitled to increase the non-realized income should it be convinced of the fact that the patent is the essential element for the creation of demand.

In calculating the non-realized income, the court will consider relevant circumstances such as:

• ▪️ the economic value of the patent;

• ▪️ the remaining term of protection for the patent right at the time of infringement; and

• ▪️ the type, nature and number of licenses granted in respect of the patent.

The IP Code enables the patent holder to ask for an increase in the calculated material compensation amount depending on the economic contribution of the patented invention in the sales of the infringing product.

• Moral damages and reputational damages

Moral damages/reputational damages are ordered at the discretion of courts and in relatively low amounts. The court considers whether the plaintiff suffered any moral damage, whether the requested amount is fair, whether the requested amount is common for the disputed industry/sector, whether the claimant has any fault, and the economic conditions of the parties and Türkiye etc.

• Procedural requirements of compensation

The claimant shall apply to mediation before filing a court action with compensation claims. The application for mediation is a mandatory pre-condition for filing a compensation action. Therefore, should the plaintiff decide to claim compensation, it will need to contact the defendant through the Mediation Bureau under the mediation procedure first. This pre-condition only applies to court actions with compensation claims.

The claimant is procedurally allowed to claim compensation within the context of the infringement action or by instituting a separate court action. The infringement and separately filed compensation action can be consolidated before the same court within one file.

The calculation of the compensation is affected through a court appointed panel of experts. Another major difficulty lies in the professional qualifications of experts appointed by the courts to assess and quantify the damages, the speed and accuracy with their findings.

There is no limitation period to bring patent infringement suit. However, a statute of limitation is set for recovering damages; 2 years as of the date when the patent holder has become aware of the damage and of the infringer and in any case 10 years from the date of the infringement.

4. Evidential actions

Prior to the main civil action i.e. infringement action, the right holder may consider filing an evidential action before the competent civil court and request determination of the infringing activities of the adverse parties from the court. This request may include online determination regarding the infringing content on websites and/or social media accounts of the adverse parties as well as official determinations at the premises of the adverse parties.

Evidential actions may be filed as an ex-parte action by presenting a strong suspicion for infringement. The adverse parties will not be notified on this action until experts submit their reports to the court file. The expert report where affirmative, will serve as evidence within the context of a PI request and the main civil action consequently filed.

The main advantages for filing an evidential action prior to the main action are;

• ▪️ the infringing activities of the adverse parties are secured. In the view of the difficulties in obtaining a fast and effective preliminary injunction, evidential actions may be useful for determining the production and marketing capacity (this is all the more important since the commercial records are often underestimating the real capacity) of the infringer thus facilitating the calculation of the compensation.

• ▪️ the receipt of a positive expert report attesting the infringing activities of the adverse parties may have a positive effect on the PI request and the main action to be consequently filed.

• ▪️ it may cause pressure on the adverse parties and a deterring effect against the potential licensee(s) in Turkey, so that it may also help to trigger settlement negotiations between parties without going into lengthy infringement litigation.

5. Assessment of Infringement in Patent Disputes

Direct infringement: Direct infringement refers to the straightforward act of making, using, selling, offering for sale, or importing an infringing product or process without authorization from the patent holder. Direct infringement can be sorted as literal infringement and equivalent infringement.

According to the IP Code of Turkey, the scope of protection conferred by a patent application or a patent shall be determined by claims. Literal infringement occurs when an accused product, process, or technology directly comprises all the features specified in the claim of the patent.

However, in the general practice of Turkish IP Courts, in an infringement court action, not only the literal meaning of the words in a claim, but also the equivalents of them are considered. It means that the court takes into account the doctrine of equivalents and the doctrine of equivalents extends the scope of protection beyond literal infringement.

The infringement is firstly assessed by comparing the properties of alleged product or process with the literal words of the claims. If the court is of the opinion of that there is no literal infringement, then they usually proceed with the assessment of equivalents.

The product or process is decided to infringe under the doctrine of equivalents if a feature of the alleged product/process performs substantially the same function, in the same way and leads to the same result as the feature of the claim.

The doctrine of equivalents aims to prevent infringers from making small and insubstantial changes to a patented invention to avoid literal infringement. However, the law must provide the legal certainty. Therefore, the claims should be interpreted in a way not only to provide the applicant or the patentee with the protection they deserve but also to provide the third parties with the reasonable degree of this legal certainty.

Accordingly, the IP Code states that when determining the scope of protection, the claims shall not be extended in a way covering the ideas that had been thought of by the inventor but had not been demanded in the claims, and also in a way to cover the features which are expected to arise by interpretation of the description and the drawings by a skilled person in the art.

Additionally, in the assessment of scope of protection and infringement under the doctrine of equivalents, the applicant’s declarations and statements during the prosecution of patent are also important and are considered.

Indirect infringement: As mentioned before, indirect infringement can be realized as contributory and induced infringement. Contributory infringement occurs when someone supplies or sells components of a patented invention to be combined or used in an infringing manner. Induced infringement occurs when someone knowingly induces, encourages, or aids another party to infringe a patent.

Accordingly, 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 unauthorized 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 unauthorized 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 have to have incited the unauthorized person to commit infringement.

6. Enforcement at Borders

The IP right holder may register its IP rights before the customs through an online system where the registration is valid before all customs offices in Turkiye.

The customs registration system allows the right holder to register the following details on the system:

• ▪️ patent documents,

• ▪️ details of the goods and how to determine an infringing product (technical specifications, packaging or color of the infringing product),

• ▪️ HS codes under which the goods would be imported/exported,

• ▪️ possible exporter and/or importer names and details of the product,

• ▪️ origin of the suspicious products, country of origin, possible price value and the shipping route of the goods.

Concerning patent rights, it is possible to place special trainings for customs officers to educate them on how to determine an infringing product. Still, the infringement analysis would not be conducted by the customs officers. The officers would evaluate the details given to them (listed above) during the registration process of the patent to decide whether or not to seize the suspicious goods.

In a scenario where an IP right holder has registered its patents before the customs, the right holder is notified by the corresponding office that suspicious infringing goods have been seized at. The notification of the customs usually grants the patent holder a time of 3 or 10 working days to visit the customs and to obtain samples from the customs for the necessary analysis on the goods to determine whether the seized goods are infringing or not and to obtain a preliminary injunction (PI) order for the continuance of the seizure of the goods at the customs.

The right holder has the chance to request a time extension of additional 10 working days for the analysis results and to obtain a PI order.  Once the right holder determines that the seized goods are infringing, the right holder is required to obtain a PI order and to submit this order to the customs for the continuance of the seizure.

Parallel importation The repealed series of Decree Laws concerning patents, trademarks and designs were including provisions for the national exhaustion of rights. However, the Supreme Court rendered decisions accepting the international exhaustion of rights despite the text of the Law.

The IP Code which is currently removed this contradiction and introduced the international exhaustion of rights principle, to replace the existing national exhaustion principle.