The Need for an Injunction in Cases Where the EPO Proceeding is held as a Pending Issue

Although there is no explicit provision in Turkish Law for the acceptance of the ongoing opposition or appeal proceedings before the European Patent Office (“EPO”) as a “pending issue” due to the principle of procedural economy, in practice, pending issue decisions may be given by the Civil Courts of Intellectual and Industrial Property Rights according to the particular circumstances. As Turkey is one of the signatory countries to the European Patent Convention, upon the issuance of a revocation decision regarding a European patent, the patent’s validation before TÜRKPATENT is also revoked. Therefore, the revocation decisions rendered by the EPO are binding for Turkey. In addition, based on the principle of procedural economy set out in Article 30 of the Code of Civil Procedure (“CCP”), which governs the proceedings, and taking into account that EPO decisions are also binding and the EPO may revoke the patent, it may be decided to postpone the proceedings before the national court to avoid unnecessary examination and workload. Since there is no specific provision in Turkish Law on the obligation to hold the EPO proceedings as a pending issue, the courts decide on whether to hold the EPO proceedings as a pending issue by considering the stage of the EPO proceedings, the type of the action, and the balance of interests among the parties.

However, considering the length of the EPO proceedings, it is necessary to consider the balance of interests among the parties in this process. In this context, especially considering that the patent protection period is limited to 20 years and there is no regulation extending this period in Turkish Law, if there is a request from the parties, it is essential to decide on provisional legal protection measures to prevent the damages that may arise due to the duration of the proceedings.

Indeed, the Regional Court of Appeal issued a precedent-setting decision emphasizing this importance. In an infringement and counter-invalidation action, the court of first instance decided to wait for the outcome of the EPO appeal process because the opposition process regarding the EPO patent has been concluded, but the appeal proceedings are still ongoing. The court rejected the preliminary injunction request filed by the patentee to compensate for the loss of rights during the waiting period of the EPO process because the EPO appeal and objection processes directly concern the infringement action, and the infringement action will affect the decision of the court. The patentee appealed this decision which was found unfair and unlawful on the grounds that the EPO appeal proceedings were concluded in favor of the patentee, the experts appointed by the court determined the patent infringement, the patent protection period is limited, and cannot be extended. There is no need to wait for this process to issue an injunction.

The District Court, deeming the plaintiff’s requests appropriate, ruled that “Although it is understood that the request for a preliminary injunction was rejected due to the pending EPO appeal proceedings, holding the process a pending matter does not constitute an obstacle for the evaluation of the request for a preliminary injunction.” Accordingly, the District Court, by noting that the request for a preliminary injunction should be evaluated while waiting for the conclusion of the EPO appeal proceedings to protect the balance of interests among the parties at this stage of the case, revoked the decision of the court of first instance that rejected the request for a preliminary injunction.

This decision has once again emphasized the purpose of the preliminary injunction to prevent the emergence of damages that occurred during the trial that are difficult or impossible to compensate for later on. Furthermore, this decision makes it clear that the requests for a preliminary injunction should be decided on a priority basis to protect the patent rights of patentees in an effective and timely manner; holding the EPO process a pending issue should not be an obstacle to the consideration of preliminary injunction requests. This decision sets an example for cases where the EPO opposition and appeal process is awaited to be finalized to prevent the parties from losing their rights for years in prolonged cases due to the pending issue.