Patents 2023 - 2

SCOPE AND OWNERSHIP OF PATENTS

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods, and medical procedures?

According to the Industrial Property Law (the IP 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.

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.

Article 82 of the IP Law establishes that business methods or computer programs are not inventions. Therefore, inventions that only consist of software or business methods cannot be patented. However, inventions including business methods or computer programs together with the other patentable elements can be patented.

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

As a rule, the owner of the invention is the person who invented the invention or his or her successors. If the invention is created by multiple persons or a joint venture, the right to request a patent for the invention belongs to all inventors jointly.

The inventor must always be a natural person. The right to request a patent for an invention may be transferred to third parties.

If the invention is made by a company employee, it should first be determined whether the invention is a ‘service invention’ or an ‘independent invention’. An invention is a service invention if it is created in the course of the employee’s duties or based on the experience and work of the employee at the business or public agency where he or she is employed. Inventions not meeting these criteria are considered independent inventions.

The employee must notify the employer of service inventions. The employer may claim full or partial right on the invention. All rights arising from the invention are transferred to the employer when the employer notifies the inventor employee of the full claim on the invention. In this case, the employer is obliged to file a patent application and becomes the patent holder.

If the employer claims a partial right on the invention, the invention becomes an independent invention. In this case, the employer may use the invention based on a partial right. The employee is entitled to file a patent application if the invention has become an independent invention.

Independent contractors are not considered employees. Therefore, the right to request a patent for their invention belongs to the contractors, unless otherwise agreed between the parties. As mentioned, the right to request a patent is transferrable.

The official recordal of the patent ownership is conducted based on the information included in the application. The transfer of the ownership of a patent is conducted through an assignment agreement, which must be in writing and notarised. If the document is notarised by a foreign office, it should also be legalised by an apostille in line with the Hague Convention. Assignment agreements that have not been notarised will be invalid. The recordal of the assignment to the registry is not compulsory; however, the rights arising from assignments that are not recorded in the registry cannot be claimed against third parties acting in goodwill. It is therefore highly recommended and good practice to register the assignments.

DEFENCES

Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

A patent can only be invalidated by competent IP courts (apart from post-grant oppositions). Under Article 138 of the Industrial Property Law (the IP Law), a patent is declared invalid by the court if:

• patentability requirements are not met;
• the invention has not been described in a sufficiently explicit and comprehensive way to enable a person skilled in the concerned technical field to implement it;
• the patent exceeds the scope of the application or is based on a divisional application and exceeds its scope;
• the holder of a patent does not have the right to a patent; or
• the patent exceeds the scope of its protection.

Under the IP Law, a court can partially invalidate a patent for one or more claims. However, a single claim cannot be partially invalidated. Any party who has a legal interest, public prosecutors or relevant establishments and institutions are entitled to request the invalidation of a patent.

Further, post-grant opposition proceedings are set out in the IP 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.

Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

Yes, patents must have absolute novelty.

The exception to this requirement is set in Article 84 of the IP Law, which 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;
• disclosure 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; or
• a third party discloses information directly or indirectly obtained from an inventor without his or her approval or knowledge; or
• disclosure by a third party that directly or indirectly obtains information from the inventor.

Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

There is no statutory provision on how to apply the obviousness test in the IP Law. However, as per the case law, the obviousness criteria are not met if a hypothetical person who is an expert or skilled person in the field could expect reasonable success in reaching the invention subject to the patent by starting from the closest reference available in the state of art and without conducting very complex or lengthy examination. It is also seen that in certain cases, the problem–solution approach is also used, as is the case in EU practice. If a skilled person would – as opposed to could – reach the solution by examining one or multiple documents on the prior art to solve the problem, the solution is recognised as obvious.

Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

No, there are no grounds on which an otherwise valid patent can be deemed unenforceable under the IP Law.

Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

As per Article 87 of the IP Law, the patent applicant or owner cannot prevent the continuation or start of the use of the invention, in line with the measures adopted, by persons who have been using the invention or who have adopted significant and substantial measures for its use, in good faith, within the country, at the date of or before the application.

However, the continuation of the use of the invention subject to the patent or its use in line with the adopted measures is limited to the reasonable requirements of the establishment owned by the prior user. The right originating from previous use cannot be licensed and may only be transferred together with the establishment.

Additionally, actions regarding the products offered for sale by the prior user are out of the scope of the patent protection.

REMEDIES

Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

In patent infringement cases, moral, material and reputational damages can be compensated.

As per Article 151 of the Industrial Property Law (the IP Law), actual damage and lost profits are covered under the term ‘damages’. Actual damage is the net decrease in the plaintiff’s assets. The plaintiff may also ask for lost profits, which are calculated based on one of the following methods set out in article 152 of the IP Law:

• the income that the patent owner would have generated had the infringing party’s competition 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.

Generally, plaintiffs are reluctant to request compensation, as the calculation of the compensation may be problematic, considering the unrecorded economy and improperly kept trade books. It is common for plaintiffs to receive less compensation than they request. Choosing the calculation method based on licence is therefore more common.

Punitive damages are not available under Turkish law. However, under article 150(2) of the IP Law, where the industrial property right is infringed, additional compensation may be claimed if the reputation of the industrial property right suffers damage because the products or services forming the subject of the right are used or produced in an inferior manner; or such products produced in this way are made available or launched to the market in an improper manner.

Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

As intellectual property rights can be irreparably and irrecoverably damaged by third-party actions, injunctions play a significant role in litigation. Injunctions are effective tools in patent litigation to preserve the results that plaintiffs hope to achieve. The legal framework and criteria for injunctions in Turkey are outlined by the Civil Procedural Law and the IP 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 that the requesting party seeks in its main action will be unlikely unless the injunction is granted.

The injunction can be effective against the infringer’s suppliers or customers only if the court renders the preliminary injunction decision against those parties as well.

Final injunctions can only be granted as the final judgment at the end of the litigation. These include, among others:

• seizing the infringing products and the machinery, devices and other instruments to the extent that the production of the products that do not constitute infringement is not prevented;
• entitling property rights on seized machinery, devices and other instruments upon the plaintiff; and
• transforming the shapes of or removing any trademarks from the seized machinery, devices and other instruments, or destruction if it is inevitable in preventing the infringement.

The decisions of courts, including injunctions, are enforced by enforcement offices. Decisions concerning IP rights must be finalised before being enforced.

Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

It is possible to block the importation of infringing products into the country. Also, in accordance with the IP Law and Customs Law No. 4458, IP rights are also protected in the customs area. For IP rights to be protected at Turkish Customs, a single application is filed through the online system of the General Directorate of Customs. This application will cover importation or exportation of infringing products and transit trade and shipment at any Turkish free trade zones.

Patent owners bringing an infringement lawsuit can also request from the competent court that the customs authority seize the infringing products or the products used in the manufacture of the infringing goods. However, unless the patent owner identifies the infringing goods, the customs authorities may not be able to detect a product infringing a patent right; therefore, the seizure procedure of the customs authorities is more effective for trademark infringements.

Attorneys’ fees

Under what conditions can a successful litigant recover costs and attorneys’ fees?

The losing party bears the official litigation fees and official attorneys’ fees of the counterparty. 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.

Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

No, additional remedies are not available.

Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Patent infringement is considered a tortious act according to the Turkish Code of Obligations No. 6098. Therefore, general rules on limitations apply to patent infringement matters.

The remedy for patent infringement can be sought within two years of the date of finding the damage and the infringer by the patent owner, provided that the claim is made within 10 years of the date of the infringement action. If the infringement is ongoing, the time limit starts again with every infringing action.

Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

There is no requirement regarding patent marking under Turkish law.

LICENSING

Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The contractual terms of a voluntary licence agreement are determined by the patentee freely. It is at the complete discretion of the patentee to limit or broaden the rights to be licensed on the patent; however, the moral rights on the patent cannot be transferred through a licence agreement. Competition law requirements and special requirements on standard essential patents are reserved.

The licensing agreement must be in writing.

Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The compulsory licence can be granted under six circumstances in accordance with article 129 of the Industrial Property Law (the IP Law):

• non-use of a patented invention for three years starting from publication or four years as of the application;
• the patent being dependent on an earlier patent;
• public interest in the use or enhancement of the use of the patented invention;
• exportation of the patented invention owing to public health issues (in accordance with the Protocol Amending the TRIPS Agreement);
• the inability of a plant breeder to develop a new variety of plant without infringing a previous patent; and
• engagement of the patent owner in activities that prevent, distort or restrict competition while using the patent.

It is sufficient for one of the above-mentioned circumstances to occur for a compulsory licence to be granted; however, the list is exhaustive. The compulsory licence is always granted by a public authority, such as the courts, the President of the Republic or the Competition Authority.

The terms of the compulsory licence are determined in accordance with the IP Law. The compulsory licence is granted non-exhaustively (except for certain conditions of public interest) and it is not allowed to subject the patented invention to exportation or importation (an exception may arise due to public health issues). The compulsory licence cannot be transferred or sublicensed.

However, as an exception, if public interest requires, the patented invention can be imported, transferred or sublicensed. The patent owner or the licensee can request the terms to be amended if the conditions have changed. The articles regarding voluntary licences are applied to compulsory licences, provided that the terms are not contradictory to the articles of the IP Law regarding compulsory licences. The licence fee is determined by courts in accordance with the economic value of the patent (except for the compulsory licence owing to public health issues of foreign countries).

PATENT OFFICE PROCEEDINGS

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Obtaining a patent takes approximately two to five years.

Official fees for granting a patent for 2023 can be found on the Turkish Patent and Trademark Office’s (TTPO) website.

Costs in a smooth-running proceeding will be between €5,000 and €8,000 (including official and attorneys’ fees). These figures do not include the drafting of the patent application.

The total costs and timing – from the filing of the patent application to the grant of the patent – depend on:

• the complexity of the invention or application;
• the number of prior art documents cited; and
• the length of the examination proceedings.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

No specific procedures are available to expedite patent prosecution under the Industrial Property Law (the IP Law). However, a patent prosecution highway system is being established at the TPTO. Currently, the Patent Prosecution Highway is applied between the Japanese Patent Office and the Spanish Patent and Trademark Office as pilot offices.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The application must disclose or describe the invention sufficiently clearly and fully so that it can be applied by a person skilled in the art.

Claims must be built up in accordance with the description of the invention and must be clear and essential. Claims cannot expand the protection that is not covered by the description of the invention. Clear and reasonable information on the effects of the features of the invention is helpful in setting forth the inventive step.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

According to article 75(1)(c) of the IP Law, the description of the invention must contain information related to the prior art that can be known by the patent holder for examination and research purposes of the application.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?

Article 123 of the IP Law allows an applicant to pursue additional claims while the main patent application is still being examined. These additional claims must perfect or improve the invention and must also be in line with the subject of the main patent. An application for a supplementary patent can be filed until the publication of the granting certificate of the main patent application.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to appeal a decision of the TPTO within two months of the notification date of the disputed decision, according to article 100 of the IP Law. The appeal is evaluated by the Re-Examination and Evaluation Board of the TPTO. A final Trademark and Patent Office decision can only be challenged by a cancellation lawsuit before the Ankara civil IP courts within two months of notification of the decision.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Post-grant opposition proceedings are set out in the IP Law. Accordingly, opposition proceedings start once the patent is granted. Third parties can file an opposition within six months of the publication date of a granted patent. Opposition can be based on the following grounds:

• the subject matter lacks 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; and
• the patent’s subject matter extends the scope of the first version of the filing.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The right to apply for a patent belongs to the person who is the first to file the application in respect of the invention, according to article 109(3) of the IP Law. If two or more persons have made the invention independently of each other, the right to apply for a patent belongs to the first to file the application, provided that the earlier application has been published. As a rule, the first applicant is considered to be the holder of the right to apply for a patent unless otherwise proven.

It cannot be argued before the TPTO that the applicant is not entitled to apply for a patent; however, a lawsuit can be brought before the competent IP courts against the holder of the patent by the person who claims to be the genuine owner of the patent.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Patent applications can be amended during the application process or upon opposition, provided that the scope of the application is not exceeded.

When a patent application is filed, the TPTO issues the patent if the patentability criteria are met. If the TPTO finds that the application does not meet the patentability criteria, the applicant is given two months to either amend its claims or object to the TPTO’s report. The TPTO will consider the applicant’s objections or amendments and if the TPTO stands by its previous decision, the applicant is allowed another two months to make a second round of objections or amendments. The TPTO’s next decision on the matter is final.

Additionally, during the post-grant opposition procedure, the patent owner may file amendments within three months of the notification of an opposition. After examining the opposition, the TPTO can invalidate the patent, reject the opposition or request further amendments to be made.

The court cannot amend the claims of a patent.

Patent duration

How is the duration of patent protection determined?

The maximum term of protection is 20 years from the filing date.

UPDATE AND TRENDS

Key developments of the past year

What are the most significant developing or emerging trends in the country’s patent law?

The implementation of some of the provisions adopted in line with the European Patent Convention (EPC) has been a topic of discussion since the Industrial Property Law (the IP Law) entered into force in 2017. For example, the compulsory licence or rules on service inventions have been major discussion points. Although the IP Law has not been amended considerably since its adoption, the implementation of certain points is left to the case law. The remuneration methods for service inventions are the main cause of debate.

Although the courts usually granted preliminary injunction decisions in patent litigations in 2022, the approach to preliminary injunctions needs to be revised, as it currently can take a long time for a decision to be finalised and to become enforceable. Even if a plaintiff ultimately succeeds, and because first instance court decisions cannot be enforced until they are finalised, preliminary injunctions should be more common.

The much-debated practices on second medical use patents, indirect use of patent and prior use defence are expected to become clearer in 2023. It is also anticipated that article 138/3 of the EPC, which allows patent owners to amend claims during invalidation proceedings, will be applied more frequently, although it has not become an established practice yet.

Additionally, although it has been five years since the new IP Law was adopted, the application of the law is still not unified between the specialised IP courts. This occurs mainly because of the different experience levels of the judges appointed at IP courts; therefore, expert reports are heavily relied upon. In 2023, it is expected that the unification of the IP Law’s application will be expedited.

Even though Turkey is not a party to the Unified Patent Court (UPC), the transition period of the UPC is another influential topic for IP law practice in Turkey.