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08 January 2018
Changes to patents, utility models, designs, trademarks and geographical indications
Structural changes concerning patent protection and enforcement
Requirement of use
Filing with office of declaration and evidence of use discontinued
Adoption of reinstatement
Mandatory declaration for genetic resources
Cancellation of independent claims
State-of-the-art search report deadlines
Amending or commenting on official communications
Post-grant opposition (newly introduced)
Enforcement – burden of proof regarding process patents
Patent infringement under new IP Code
Legal remedies against patent infringement
Indirect contributory infringement
Doctrine of equivalents
The Industrial Property Code 6769 (IP Code) entered into force on January 10 2017. It repealed and replaced the decree-laws on patents, utility models, trademarks and service marks, industrial designs and geographical indications. The new IP Code has made a wide-ranging impact at:
As regards IP rights, the IP Code replaces the following repealed decree-laws with an act of Parliament:
It also aims to:
With regard to IP legislation, the new IP Code was prepared by using the repealed decree-laws as its starting point.
Accordingly, the coherent and integrated body of IP legislation that Turkey has enjoyed since June 27 1995 through the repealed decree-laws is now found in the new IP Code, albeit with some amendments.
These measures underline the aim to keep modernising and adapting Turkey's IP legislation and institutions.
The new IP Code consists of:
Section 1 of Book Five covers common provisions applicable to patents, designs, trademarks and geographical names in:
Articles 166 to 180 concern the internal organisation of the Patent and Trademark Office. These provisions introduce structural changes to the office's organisation by amending Law 5000/2003 on the establishment and duties of the Patent Institute (its former name), such as the establishment of the Intellectual Property Academy and Educational Centre of Industrial Property Rights (Article 168) and the Department of Geographical Indications.
Articles 181 to 182 of Section Two, Book Five concern patent and trademark attorneys and introduce:
Articles 183 to 193 of Section Two, Book Five concern staff needs and the Patent and Trademark Office's structure.
International exhaustion of rights
Article 152/1 of the IP Code replaced the national exhaustion principle under repealed Decree-Laws 551, 554 and 556 with the international exhaustion of rights principle.
Under Article 152/2 of the new IP Code, trademark rights holders can stop the commercial use of products which have been altered or depreciated.
New form and (electronic) means of notification
Under Article 160/6 of the new IP Code, the Patent and Trademark Office no longer needs to follow the electronic notification rules as provided by Notification Law 7201/1959.
Prompt destruction procedure
Article 163 of the new IP Code is applicable to goods seized and placed under judicial custody in the context of the criminally punishable acts mentioned in Book One of the code with regard to trademarks.
No criminal penalties for infringement of patents, utility models, design patents and geographical indications
Repealed Decree-Laws 551 on Patents and Utility Models, 554 on Design Patents and 555 on Geographical Indications provided criminal penalties which were subsequently annulled by Constitutional Court decisions on the grounds that criminally punishable acts and criminal penalties cannot be provided by decree-laws, but only by acts of parliament.
Criminal penalties only for trademark infringement
Law 5833/2009 on criminal penalties regarding trademark infringement has not been repealed.
Registered IP rights no longer valid defence against infringement claims
Under Article 155/1 of the new IP Code, registered trademarks, patents and industrial design registration rights do not constitute a legitimate defence against an infringement claim put forward by the owner of the earlier IP right. This provision will evidently require an intensive clearance search – even in the case of a registration – before the use of any IP right.
Case law under the repealed legislation accepted that trademark and industrial design rights registered with the Patent and Trademark Office constituted a legitimate defence against infringement claims, unless and until the registered right was cancelled and removed from the register. This case law caused preliminary and permanent injunction requests to be delayed or rejected until cancellation of the infringer's trademark or design right.
More favourable provision clause
Article 4 of repealed Decree-Laws 551 on Patents and Utility Models, 554 on Design Patents and 556 on Trademarks has not been included in the IP Code. This provision has apparently been excluded to avoid duplication of Article 90 of the Constitution, which concerns the hierarchy of norms (ie, international conventions override national laws).
Article 4 would have permitted the application of Articles 54/4 and 54/5 of the European Patent Convention when filing a patent application for second medical use. Due to the IP Code's silence on this issue, such a request would not be favourably received. Instead, the only alternative would be to challenge an administrative decision through the courts.
Suspensive effect of appeal of first-instance or appellate court decisions
Article 162 of the new IP Code states that "in court actions instituted against the decisions of the Higher Council of Examination and Evaluation (of the Patent and Trademark Office) as well as in invalidation actions, the decision of the court shall not be executable until it becomes finalized". In other words, for all such cases, the appeal will automatically have a suspensive effect on first-instance or appellate court decisions until the case is finalised.
This new provision introduces yet another regime under Article 367 of the Civil Procedural Law for cases involving invalidation and cases instituted against Patent and Trademark Office actions (eg, refusal decisions or actions regarding post-grant oppositions in patent and design patent matters).
Repealed Decree-Law 551 on Patents and Utility Models provided:
Abolition of short-term seven-year patent
The new IP Code provides:
Introduction of post-grant opposition (for patents only)
The new IP Code establishes an appeal board as part of the Patent and Trademark Office.
The IP Code has also introduced changes concerning utility models. As regards the new requirement of mandatory state-of-the-art search report:
As regards the explicit definition of matters excluded under utility models, the new IP Code grants no utility model certificate for:
Second medical use patents
The new IP Code is silent concerning the patentability of second medical use inventions, despite a recent Supreme Court ruling that second medical use inventions are patentable. Turkey acknowledges the protection of second medical use patents validated through the European Patent Convention, to which it is a party.
Supplementary protection certificates – no protection afforded
The IP Code harmonises Turkish legislation with the European Patent Convention and EU Directive 98/44/EC on the legal protection of biotechnological inventions.
Articles 82/3/b, c, ç, d and 5 of the code, which concern patentable inventions and exceptions to patentability, cite non-patentable biotechnological inventions in order to mirror the provisions of:
The motivation of the new IP Code clearly establishes the biotech areas that qualify for patent protection, which reflects the biotechnological subject matter retained as patentable according to EPO Enlarged Board of Appeal decisions. As no definition of a 'biotechnological invention' is provided in the act, this issue will have to be shaped by case law.
The IP Court recently ruled in the same decision that:
The decision is pending before the Supreme Court.
Article 130/2 of the new IP Code introduces an application date as an alternative date for using a patent. The statutory period for using a patent has been amended to:
Further, the period for using a patent may be longer than the timeframes referred to above, as Article 130/2 provides that "use as of the date when the compulsory license request has been made is to be evidenced". In other words, any use made after the above timeframes, but before the compulsory licence request, will remedy non-use after the above deadlines until the date when the request for compulsory licence is made. This increases flexibility in favour of the patentee.
This amendment makes it possible to:
Patents cannot be cancelled on the ground of non-use and the sole penalty for the non-use of a patent is a compulsory licence.
The requirement to file with the office a declaration and evidence of use has been annulled. Under Decree-Law 551, patent use had to be reported to the Patent and Trademark Office by filing the appropriate declarations and documentary evidence to such effect. The new IP Code is silent on this issue and contains no provisions regarding the declaration and documentary evidence of the use of patents. Therefore, the prosecution of the filing of declarations and other documentary evidence concerning the use of patents has been discontinued and no action need be taken from January 10 2017 in this regard. This is a welcome development, as it streamlines this process by simplifying and reducing prosecution costs regarding the maintenance and working of patents.
Compulsory licences have been maintained by introduction of the following grounds for requesting a compulsory licence:
In addition, the Competition Board has also been introduced to hear and decide cases alongside the courts and judiciary where the grounds for requesting compulsory licences concern the restriction or breach of competition rules (Article 129/2 of the IP Code).
Article 107/2 of the new IP Code introduces reinstatement to Turkish legislation, thus furthering harmonisation with the European Patent Convention. This is a welcome development, as reinstatement was not permitted under the repealed Decree-Law 551. The new IP Code mirrors Article 122 of the European Patent Convention in this regard. However, the Patent and Trademark office has yet to settle on agreed practice regarding reinstatement. For example, European patent validations not effected within the deadline for various reasons must wait for the office's decision regarding reinstatement. For patents that have lapsed by failure to pay annuities on time, the office will reinstate the patent provided that the six-month grace period for late payment with fines expires after the IP Code's enactment date (ie, January 10 2017).
Employee inventions are one of the new IP Code's main areas of intervention. This chapter has undergone substantial structural modifications with resulting interpretative uncertainties.
The new IP Code provides three regimes for employee inventions:
Under Article 116/1 of the IP Code, an employer must apply for a patent on claim of full ownership of a service invention. In such cases, the employer must file the first patent application before the Patent and Trademark Office.
Under the repealed Decree-Law 551/1995, employers had the right to apply to the Patent and Trademark Office for a patent (Article 26/1) and could also file a patent application in a foreign country (Article 27/1).
Inventions made in higher education bodies
The IP Code has abolished the so-called 'professors' privilege' regarding the ownership of inventions made during the performance of work duties.
All inventions made by scientific staff (including doctorate students and interns in the course of their duties) are deemed to belong to the higher education body concerned, with the proviso that in reply to a declaration of invention made by the inventor, the higher education body makes a formal request of ownership for the invention which is tied to the obligation to file a patent application. If a patent application is not filed on time, ownership of the invention reverts to the inventor.
Under Article 121/5 of the IP Code, Articles 115, 116, 118 and 119/4 are not applicable to inventions made in higher education bodies.
Inventions made under projects supported or financed by public bodies
Article 122 of the new IP Code constitutes new rules for inventions made in the scope of projects supported or financed by public bodies. Persons benefiting from such a project or support must inform the public body in question in writing within one year from the declaration of an invention if they claim ownership thereof.
Employee inventions applicable solely to patentable inventions
In contrast to the Articles 16(1) and (2) to 33 of repealed Decree-Law 551/1995, which distinguished between patentable inventions and non-patentable technical improvements within the context of employee inventions, the IP Code is silent about non-patentable technical improvements. Accordingly, under Article 113(1) of the new IP Code, employee inventions are restricted to patentable inventions only.
Under Article 90/2 of the new IP Code, any descriptions, claims, abstracts and drawings, if any, can be filed as part of a patent application in the official language of any signatory country to the Paris Convention or the Agreement on Trade-Related Aspects of Intellectual Property Rights or the language of any other country subject to reciprocity. Under Article 42/4 of the repealed Decree-Law 551, the filing language was limited to English, French and German.
Article 90/4 of the IP Code introduces a mandatory declaration to patent applications concerning genetic resources and traditional knowledge based on genetic resources. This requirement is introduced on the basis of Turkey's membership of the Convention on Biological Diversity and the Cartagena Convention on Biosafety. There is no need to make this declaration for patents validated in Turkey through the European Patent Convention.
The new IP Code has introduced the 'farmer exception' to the provision regarding the scope of patent rights concerning:
Under Article 138/4 of the new IP Code, the cancellation of an independent claim causes the cancellation of any dependent claims provided that each of the dependent claims, on its own, does not meet the patentability criteria.
Accordingly, the dependent claims that meet, independently from each other, the patentability criteria, will survive. The IP Code does not provide for the possibility of amending claims by combining them to overcome their cancellation. This stance conforms court practice by retaining or rejecting claims in their entirety. It is regretful that the IP Code has not brought the amendment of claims in the course of invalidity actions before the IP courts in line with Article 138/3 of the European Patent Convention.
The deadline for requesting a state-of-the-art search report has been shortened to 12 months from the filing date of an application (Article 96/1 of the new IP Code) and the priority date has not been retained. Under the repealed Decree-Law 551, this deadline was 15 months from the application date or priority date.
The possibility to amend and comment on official communications by an examiner before a substantive examination report is issued is limited. A single substantive examination report will be issued, whereas up to three examination reports were previously allowed.
This provision realises the long-standing Patent and Trademark Office practice of limiting the number of replies and amendments allowed against office actions concerning substantive examination reports.
Under Article 101/2 of the new IP Code, no yearly annuity fee is paid for the second annuity. Yearly fees are due from the end of the second year from the date of filing.
Under the new IP Code, the grounds of opposition are that:
The deadline and procedural sequence are as follows:
Should the patentee not approve the amendments and not file them with the Patent and Trademark Office within two months (if required), the patent will be deemed invalid.
Invalidity decisions are issued by the Patent and Trademark Office and published in the Official Patent Bulletin. Decisions can be appealed within two months before the Ankara IP Court.
With regard to patent enforcement, Article 141/2 of the new IP code aims to remove any room for interpretation by retaining that:
These provisions are in line with the Trade-Related Aspects of Intellectual Property Rights Agreement.
Under Article 141 of the new IP Code, the following actions constitute patent infringement:
These provisions are almost identical to those in Article 136/1 of repealed Decree-Law 551.
Notably, the new IP Code has added "making proposals to enter into agreement in relation to such products" to the list of what constitutes patent infringement. It will be interesting to see how case law determines the scope of application of this newly added act of infringement.
Notably, the new IP Code has removed the following patent infringement actions which featured in repealed Decree-Law 551:
The patent holder may request the following remedies against patent infringement:
At the enforcement level, the new IP Code aims to strengthen the remedies for patent infringement by making it possible to make a court request for the "determination and prevention of infringement" as part of a permanent injunction order.
Further, the new act provides confiscation rights for the infringing products. As regards the devices and machinery used in the production of such products, confiscation rights are limited to devices and machinery which are specifically used for the production of infringing goods.
With regard to compensation for patent infringement, rights holders can request compensation for material damages, moral damages and any use which has been detrimental to a patent's reputation.
Material damage can be claimed for effective loss and the rights holder's non-realised income. The rights holder can choose between the following modes of calculation in order to determine non-realised income:
The new IP Code changed the calculation method for non-realised income by determining the net income which a patent infringer obtained through the use of the IP right in question.
Repealed Decree-Law 551 stipulated that non-realised income must be calculated by considering parameters such as economic importance, the terms of IP rights and the number and type of licences issued during the infringement investigation. The new IP Code has removed the parameter of the term of patent rights and instead sets parameters concerning:
Article 86 of the new IP Code is based on Article 74 of repealed Decree-Law 551; however, the word 'instigate' has been changed to 'encourage' in Article 86(2) of the new IP Code.
As a result, rights holders can prevent third parties from providing the essential elements of a patented invention which would enable unauthorised third parties to exploit it.
The new IP Code sets the following conditions for contributory infringement:
Article 89(5) of the new IP Code is based on Article 83(6) of Decree-Law 551, with a number of minor differences, but maintains the following criteria according to which equivalents are assessed.
The scope of patent protection is assessed by considering whether an element equivalent to the element specified in a patent claim exists when the alleged infringement is put forward.
An element is deemed equivalent to another found in the claims if it essentially performs the same function in an identical manner and produces the same result.
Under the new IP Code, a patentee can ask for a preliminary injunction to secure the effectiveness of a court action. Rights holders must prove that an infringement occurred or that there was a serious and effective effort/preparation made to perform such infringement.
A preliminary injunction can be requested to:
An injunction can include activities in Turkey, including customs and free port zones.
The new IP Code enables rights holders to request the confiscation of the means used to:
The new IP Code aims to improve the quality of patented inventions and harmonise Turkish patent law with EU legislation and the international agreements to which Turkey is a party. However, while the new IP Code has yet to be fully harmonised with the European Patent Convention, it is expected that these gaps will be filled when parties enforce their patent rights before the courts.
For further information on this topic please contact Mehmet Nazim Aydin Deriş or Okan Çan at Deriş Patents and Trademarks Agency by telephone (+90 212 252 6122) or email (email@example.com or firstname.lastname@example.org). The Deriş website can be accessed at www.deris.com.tr.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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