Unified Patent Court - How It Will Resonate in Turkey?

The concept of the Unified Patent Court (“UPC”) entered the lives of European Patent holders with the UPC Agreement, an international agreement dated February 19, 2013. The system is intended to start as of June 01, 2023. The courts in question constitute a big and important step towards ensuring the unity of the judiciary for the European Union member states. With the completion of the approval processes for 17 European Union countries, a few days before the start of the transition period called the “sunrise period”, the issues regarding the implementation of the system began to become apparent. On the other hand, there are some uncertainty and hesitations about how the system will resonate in the countries that are parties to the European Patent Convention (“EPC”) but not members of the European Union. In this article, the possible effects of this system in Turkey, which is within the EPC countries but outside the UPC system, will be examined.

As a non-European Union country that is a party to the EPC, Turkey is essentially in the same position as Norway and Switzerland against the UPC. Likewise, the post-Brexit UK has joined the list of countries that are EPC parties but not UPC countries. It is not possible to mention that the UPC system directly affects these countries. As a matter of fact, just like before the UPC, European and national patent applications will continue to be made from these countries after the UPC. In this respect, patent holders in countries that are not members of the European Union will also be able to include their European patents in the UPC system for UPC countries, or if they wish, they can keep their patents within the classical European patent system with the opt-out procedure, and they will benefit from the national patent protection in their own countries. Today, considering the comprehensive jurisprudence database created by the EPO on one side, the UPC, which has not yet started its life and made any decisions, seems to benefit from the EPO case law until it forms its own established jurisprudence. In the same vein, the European intellectual property law circles anticipate that after the UPC makes decisions, they may affect the EPO case law.

Nonetheless, there is no regulation on making the appeal proceeding before the EPO a prejudicial matter or vice versa, regarding a patent both subjected to n EPO appeal process and a revocation action before UPC.

It would not be wrong to say that at the point reached today in the invalidity proceedings before the Turkish IP courts, the courts have started to reach a consensus on deeming the opposition and especially the appeal processes at the EPO as a prejudicial matter before starting the examination phase of the invalidation proceedings against a European patent in Turkey. In this context, the courts tend to wait for the decision of the EPO in order not to occupy the judicial system unnecessarily since a possible revocation decision that the EPO may render will directly impact the patent validated in Turkey. So, if the EPO revokes the patent after it is reflected in the registry in Turkey, the Turkish IP courts decide that the case becomes devoid of essence without further examination. On the other hand, if the EPO decides to maintain the European patent as granted or after amendments or limitations, the local court starts the national examination and then decides on the validity or invalidity of the Turkish part of the patent. As it is seen, the EPO proceedings have great importance on the Turkish judiciary regarding European patents validated in Turkey.

In this regard, although there is no requirement in terms of legislation, considering that the UPC proceedings and EPO evaluations have a high probability of affecting each other, it can be said that the decisions to be made by the UPC regarding the validity of a European patent that is included in the UPC system and has validation in Turkey may also affect the Turkish proceedings. Thus, considering that the decisions to be made by the UPC are expected to be concluded faster than the EPO process, it is possible to make the following inference: decisions made by the UPC regarding the validity of a European patent included in the UPC system will set a precedent before the EPO, so UPC decisions will now set a precedent in the Turkish proceedings. This situation raises the possibility that Turkish judges may slightly change their prejudicial matter practices.

Namely, when a national invalidation action is filed in Turkey against a patent pending before the EPO, the local court will most likely decide to wait for the EPO process. If an invalidation action is also brought before the UPC at this time, the UPC decision will most probably be rendered before the EPO decision is made, as the UPC proceedings are expected to be concluded more quickly. A distinction is likely to be made at this point: If the UPC decides to invalidate the patent, we expect the Turkish court to continue waiting for the EPO decision, as it will consider that the EPO will also likely render a revocation decision. However, if the UPC decides on the patent’s validity, will the Turkish court, which expects the EPO to follow this decision, withdraw its decision to wait for the EPO and initiate the national proceedings not to waste time? Or will it continue to wait for the EPO’s decision, even though it knows that the patent is more likely to be validated by the EPO?

The answer to this question will emerge depending on many factors, such as the correlation between EPO decisions and UPC decisions over time, the speed at which UPC decisions are made, and the amount of UPC decisions that Turkish courts will face. However, if the Turkish court decides to wait for the EPO’s decision, although a decision rendered by the UPC regarding the same patent, it is inevitable that one of the parties will request the withdrawal of this decision due to its position and strategies in the market, and this issue will have to be evaluated.

First published by ManagingIP in 21.03.2023.