Patents 2023 - 1

Patent Enforcement Proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Patent rights are enforced by way of an infringement action against the infringers, usually before the specialised intellectual property courts. However, IP courts exist only in larger cities (i.e., 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) is entitled to handle such lawsuits.

Infringement actions generally begin with a preliminary injunction claim and the discovery and determination of evidence tools as provided in Civil Procedural Law No. 6100 (the CPL). To seek preliminary injunctions, the proceedings generally begin with using these tools, which are effective during infringement actions, to:

• reserve 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.

Within the scope of an infringement action, the rights owners are entitled to request:

• compensation for damages (moral, material and reputational);
• destruction of infringing products;
• confiscation of manufacturing tools; and
• publication of the judgment.

Trial format and timing

What is the format of a patent infringement trial?

The procedure and format of the patent infringement trial are set in accordance with the CPL.

Civil proceedings are initiated by the plaintiff submitting a complaint brief to the court. If there is a preliminary injunction request, the court will evaluate this request as a first step. After the evaluation, the court will generally schedule a hearing date to reach a decision in the presence of both parties. The court may also decide to confer with an expert panel to examine the details of the conflict further before granting a preliminary injunction. The decision will be limited to the preliminary injunction request; the merits of the case are not discussed.

Upon completion of the preparation and preliminary injunction examination, the exchange of petitions phase starts. The defendant responds to the complaint brief of the plaintiff and the plaintiff files its counterarguments. The defendant’s submission in response to the counterstatement concludes the exchange of petitions phase.

Upon the end of the exchange of petitions phase, the preliminary examination phase starts. During the preliminary examination, the court examines the conditions of the conflict between the parties. This examination is considered as preparation for the analysis of the merits of the case.

After the preliminary examination phase, the investigation phase starts. The court evaluates the evidence submitted by the parties and investigates the accuracy of the facts alleged by the parties. For the purpose of examining the accuracy of the submitted documents, the court decides whether or not to confer with an expert witness.

After the expert witness report is delivered to the parties, the parties are entitled to file comments or objections (or both) against the report. Prior to the court’s decision, the court evaluates the report and the parties’ comments. If the court deems the report sufficient, it does not ask for an explanation and concludes the investigation phase. However, if the report is not sufficient, further explanation can be requested from the expert, or other experts can be appointed.

After the conclusion of the investigation phase, the judgment phase starts. During this final phase, the judge renders a decision after examination of the accuracy of the claims.

The parties are free to submit any evidence to the court, unless certain proof is required by law. There is no such limitation for patent infringement lawsuits; therefore, expert opinions, witnesses or any documentation can be relied upon. The Turkish legal system does not recognise affidavits as evidence, but these can be considered as discretionary evidence. Site visits, discovery visits and determination of evidence proceedings are effective and commonly used tools to collect and preserve evidence either before or during the trial.

While cross-examination is not available, the court can, in principle, allow the parties to address questions to the counterparty through the court. Additionally, one judge is appointed for each IP court. Jury trials are not applicable under the Turkish legal system.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

As per article 190 of the CPL, the burden of proof lies with the party that derives a right in its favour from the legal result linked to the alleged fact. This party in patent infringement actions, invalidity and unenforceability is the plaintiff. Therefore, the burden of proof is on the plaintiff. Nevertheless, this does not affect the responsibility of the defendant to overcome the arguments of the plaintiff and defend its position through filing its own evidence supporting its claims.

According to article 141(2) of Industrial Property Law No. 6769 (the IP Law), if the subject of a patent is related to a process for obtaining a product or material, the court may ask the defendant (instead of the plaintiff) to prove that the process used for obtaining the same product or material was different from the patented process.

As per article 150(3) of the IP Law, the rights owner, before instituting a legal proceeding for compensation related to infringement of industrial property rights to determine the evidence, or if a legal proceeding for compensation has been instituted in order to determine the amount of damages, may ask the court to order the person responsible for compensation to submit to the court the documentation related to the use of the industrial property right.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The owner of the patent rights can bring a lawsuit for infringement. An exclusive licensee is also entitled to file an infringement action, unless otherwise agreed in the licence agreement. A non-exclusive licensee can request the patent owner to file an action against a patent infringement, unless it is stated otherwise in the agreement. If the patent owner does not take the requested action within three months, the non-exclusive licensee can file the action himself or herself.

As per article 154 of the IP Law, anyone who has an interest may demand the rights owner to provide his or her opinion about whether or not commercial or industrial activities being carried out or to be carried out or serious and actual attempts carried out for these purposes in Turkey would cause an infringement of his or her industrial property right. If no opinion is provided within one month of notification of this demand or if the opinion given is not accepted by the interested party, the interested party may institute a legal proceeding against the rights owner for a decision on non- infringement. The plaintiff must prove its legal interest for filing an action for a non-infringement declaration. The submission of an opinion by the rights holder is not a prerequisite for the legal proceeding to be instituted.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Article 141 of the IP Law sets out the grounds for bringing a patent infringement action but does not list indirect use as an act of infringement. Article 86, however, does give the patent owner the right to prevent such indirect use. Accordingly, the patent owner can seek protection against the parties who are inducing or contributing to patent infringement.

Article 86 sets forth that:

‘The patent owner is entitled to prevent third parties from giving the elements and instruments related with a part of invention which enables the implementation of the invention which is subject to the patent and constitutes the essence of the invention, to persons who are not authorized in the use of the invention which is subject to the patent. It is necessary for the referred third persons to know that these elements or instruments are suficient to implement the invention and that they will be used for these purposes or this condition should be suficiently clear for this provision to be applicable.

A patent owner can seek protection against multiple parties jointly, provided that the situation meets the conditions in Article 86 and the requirements of the procedural law.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

In accordance with article 57 of the CPL, in case the facts and the legal basis of the lawsuits are identical, multiple parties can be joined as defendants. Since the facts and the legal basis of the lawsuit must be identical, the defendants must be accused of infringing the same patent.

Therefore, separate actions will constitute separate facts for the lawsuits.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Turkey do not directly constitute patent infringement in Turkey. The principle of territoriality also applies to patents. The patent rights owner is entitled to prevent infringing products to be imported or exported. Third parties may have a significant role in the course of import and export activities, depending on the extent of their involvement.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

The doctrine of equivalents is applied in Turkey. As per article 89(5) of the IP Law, when determining the scope of protection, all elements equivalent to those defined in the claim are also considered. If an element performs the same function in the same way and provides the same result as the one specified in a claim, that element is accepted as equivalent.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Article 400 of the CPL describes the procedures of determination of evidence. Under article 400, either party is entitled to request the court to conduct a site visit, order an expert examination or hear a witness, on the condition that the requesting party has a legal benefit in filing such request. The condition of the legal benefit is met if the evidence may be lost or very difficult to set forth unless it is immediately secured.

Determination of evidence is requested through a petition before or during the action. The determination of evidence is a preliminary measure and is therefore conducted immediately. The counterparty has the right to oppose the determination of evidence decision of the court within one week of the notification date of the decision. If the counterparty does not oppose, the determination of evidence is performed. Generally, the experts are given one month to prepare the report on the evidence after determination. The report should not include any conclusions as to the merits of the case; it should simply state the existing situation. During the determination of evidence procedure, no evidence, including the infringing product, is seized. In order to seize the evidence, a preliminary injunction decision must first be granted by the court, as such a seizure directly affects property rights.

Additionally, under article 288 et seq of the CPL, the court may decide to conduct a discovery ex officio or upon the request of one of the parties in the courts or in the place of the dispute. Within the scope of discovery, the judge can also decide to have expert assistance regarding the technical aspects of the dispute.

Moreover, according to article 150(3) of the IP Law, the rights owner, before initiating a patent infringement lawsuit claiming compensation, can ask the court to request the documents regarding the use of the patent to be submitted by the accused infringer, for the determination of evidence or to calculate the damages.

Because the jurisdiction of the Turkish courts is limited to the borders of the Republic of Turkey, the courts cannot directly order the evidence to be seized or brought from abroad. However, Turkey is also a signatory to the Hague Evidence Convention on obtaining evidence from abroad; therefore, certain evidence can be collected through the help of this convention and reciprocity principles.

The parties may also bring foreign official documents if the documents have been legalised by the foreign government issuing the document.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

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.

The decisions of the first instance courts can be challenged before the regional courts. The parties submit another set of petitions for the appeal phase. The regional court may invite the parties for a hearing if it deems it necessary.

The decisions of the regional courts can be challenged before the Court of Appeals. The appeal procedure before the regional court takes around 12 to 18 months.

The appeal procedure before the Court of Appeal takes another 12 to 18 months. Consequently, it can take around three-and-a-half to five years to finalise a civil action.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Prior to initiating a lawsuit, the parties may choose to send cease-and-desist letters through public notaries. The official notary cost is approximately 1,000 to 1,300 Turkish lira.

In general, the plaintiff bears the litigation costs. If the plaintiff is found rightful, the losing party bears the official litigation fees and official attorneys’ fees of the counterparty. At first instance, the official fees and expenses – excluding the expert fee for patent actions without claiming damages – will be around 5,000 Turkish lira. If the case is referred to an expert body, the expert fee can be around 2,000 to 5,000 Turkish lira per expert. Considering that these cases are generally examined by an expert committee consisting of three experts, the expert fees could total 6,000 to 15,000 Turkish lira. The minimum attorneys’ fee determined in line with the annual tariff declared by the Turkish Bar Union is 15,000 Turkish lira in cases of invalidation actions and infringement actions without claims for damages. If there is a compensation claim, the official attorneys’ fees are calculated in percentages depending on the amount requested. Professional attorneys’ fees may vary depending on the complexity of a case.

For appeals handled by the regional court and the Court of Appeal, the official fees and expenses are also around 5,000 Turkish lira. If an additional expert report is obtained before the regional courts, the costs may increase.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

First instance court decisions can be challenged before the regional courts.

The regional courts conduct a full review of the lawsuit, including the legal and factual review. The parties cannot submit new evidence or put forward new facts at this stage unless it can be shown that the court has not considered the evidence or has determined that it is not relevant, or that the evidence has not been submitted earlier for force majeure reasons.

The decisions of the regional court can be challenged before the Court of Appeal. The examination before the Court of Appeal is limited to a legal review of the case; therefore, the Court of Appeal examines whether the law has been applied correctly to the case, and new evidence cannot be submitted.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

In principle, enforcement of a patent does not constitute a competition violation, since using a legal right cannot be considered unlawful according to the Constitution. However, the patent owner can be liable in case of abuse of a right that results in unfair competition and business-related tort.

As long as infringement actions are allocated to abusive behaviours of market-dominating companies, competition issues may arise. However, The Turkish Competition Authority does not have any precedent for the enforcement of patent rights and its relationship with competition law.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Disputes regarding the invalidation of a patent cannot be subject to arbitration because the result of an ADR procedure is only binding for the parties, and invalidity disputes also relate to the official registry and public policy.

Negative declaratory and infringement actions may be subject to ADR. Arbitration, mediation and out-of-court settlements are possible alternative dispute resolution methods; however, they are not as effective as court proceedings.

* The content was originally published in Lexology Getting The Deal Through Patents 2023 Questionnaire – Turkey Chapter.

Tagged with: Moroğlu Arseven, Gökçe İzgi, LL.M., Yonca Çelebi, Intellectual Property, Patent,