Turkey: Working Requirements: When and How

Last Updated: 3 November 2015
Practice Guide by Deris IP Attorneys

According to the presently valid practice relating to the working requirements in Turkey in accordance with Decree Law No. 551 as well as the Implementing Regulation of said Decree Law in consideration of the new amendments having entered into force on 6 December 1998 upon publication in the Official Gazette no. 23545 of the amending new regulation.

The time period of 3 years for putting a patent/utility model to use in Turkey runs as from the date of publication of the granted patent in the official Patent Bulletin. Below, one may find the presently enforced practice of the Turkish Patent Institute regarding the fulfillment of working requirements in accordance with the Decree-Law No.551.

The following courses of action may be adopted to meet the working requirements of the patent/utility model in Turkey:

1) Filing Certificate of Use with the Turkish Patent Institute

The working requirement of a patent registered in Turkey is met by the effective use of the patent in Turkey. Where such effective use is made in Turkey via production of the patented product/method, that is if the subject of the patent is effectively produced in industry by the patentee and/or by an authorized person/firm located and operating in this country, a Certificate of Use is to be filed within the time period of 3 years with the TPI. This Certificate of Use shall be prepared and filed in Turkish language. We herewith enclose an English version of the Certificate of Use for your information. The Turkish version of this form should be prepared and executed by the Turkish production company, which produces the subject of the patent.

2) Submitting Importation Documents to the Turkish Patent Institute

With the entry into force on 8 December 1998 of the amendments to the Implementing Regulation of Decree-Law No. 551, the importation of products into the country and/or the use of the patent in the manufacturing of the imported products into Turkey is being accepted by the TPI to constitute effective use of the patent embodied in such products.

To this effect, where the patent is presently not effectively produced in Turkey but where the goods embodying said patent are imported into Turkey then it will suffice to file with the TPI the importation document(s) of such goods. The TPI accepts in lieu of a Certificate of Use all such importation documents for evidencing use in Turkey as Certificate of Use documents and these documents are recorded in the Patent Register.

3) Filing documents with the Turkish Patent Institute to prove Legal Excuse for non- use of the invention subject to patent protection

Where the patent is not used due to valid reasons, in accordance with amended Article 39 of the Implementing Regulation of 6 December 1998 the patentee has the right to file with the TPI documents and information explaining the legal excuse of objective nature leading to the non-use of the patent.

4) Recordal and Publication of Offer for patent licensing

Where the patent is presently not effectively worked in Turkey and where the patentee makes no effective use of the patented invention in Turkey according to the provisions of Article 96 of the Decree-Law No. 551, the patentee is to apply to the TPI requesting the publication of an "offer for licensing" in compliance with the Section VI, Chapter III of the Decree-Law No. 551.

It is not necessary to repeat at given intervals the "offer for licensing" as it was the case under the earlier practice valid until June 27,1995. Filing the request before the TPI of the "offer for licensing" by the end of three years period of use running from the date of the publication of the granted patent will suffice for the rest of the patent term in consideration of the provisions of the Article 5 of the Paris Convention on the matter.

As to the costs involved, please refer to the below table. Please be advised that the fees will be converted into the currency at the exchange rate of the invoice date. Furthermore please note that the official fees are re-arranged every year by the Turkish Patent Institute therefore there may be slight changes in the below quoted official fees as of beginning of the new year.

When should Certificate of Use be filed with the TPI?

In case of a production in Turkey of the patented product or of the product obtained via the patented process, it will be sufficient to meet the working requirements of the patent by filing the Certificate of Use with the TPI. The Certificate of Use shall include the registration number and date of the patent, the title of the invention, the date of start of use of the patent, the name, address and signature of the person making the declaration of use and the date of issue of the Certificate. The said Certificate is to be executed and sealed by the Turkish Chamber of Commerce and Industry of which the firm using the subject patent in Turkey, i.e. the patentee or an authorized firm of the patentee, is a member or by any other relevant authority. The production of the patent outside the Turkish territory has not to be considered by the TPI for filing a Certificate of Use. The original form prepared in Turkish language has to be filed with the relevant Turkish Chamber of Commerce and Industry for certification purposes. The relevant attesting authority shall issue the Certificate of Use attesting the working of the patented invention only after the examination of production at the enterprise where the invention is used and shall confirm that the invention is being offered for sale or put into effective use. In case the patent is put into use not by the patentee but by any other party upon authorization/license of the patentee, the Certificate of Use shall be also accompanied with the deed of authorization/license and the same should be executed by both parties and sealed. It is important to note that the deed of Authorization /license to use the patent shall additionally be recorded in the Patent Register if it is to have effect against third parties in good faith.

Which documents are required for recordal of the importation documents before the Patent Register in order to prove use of a patented product or process?

The TPI effects the recordal of the importation documents as use of the patented product or of the product obtained via the patented process only upon receipt of sufficient documentation, which is constituted as follows:

Most importantly, a Customs Declaration for the goods imported by Turkish clients into Turkey obtained from the Turkish Customs Authorities evidencing the entry of the products/process embodying the patent into the Turkish territory is officially required. In the absence of the submission of this Customs Declaration, it is possible that the TPI may not complete the recordal of the importation documents in the Patent Register.

The following documents can also be submitted together with the Customs Declaration:

* A legible copy of an invoice from the patentee to the Turkish firm;

* Transportation certificate;

* Catalogue of the products;

* ATR1 certificate of origin and Customs Declaration from exporting party.

Said documents shall clearly indicate the exporting - importing parties as well as the patent subject to importation into Turkey. If a company other than the patentee himself does the exportation, a declaration of authorization prepared on the company paper of the patentee should be submitted before the TPI. In fact, this documentation establishes and attests the relationship between the patentee and the exporting company where the patentee himself does not effect the exportation. 

Does the time period of three years for putting the patent into use can be extended?

The time period of three years ending within three year as from the publication date of the grant of the patent in the Official Patent Bulletin cannot be extended.

Does any document regarding the working requirements can be submitted with the TPI after the end of the time period of three years?

After the expiration of the deadline, any one of the above mentioned four actions or submission of documents regarding the proof of the use of the patent could be submitted too and will be considered by the TPI and recorded in the Patent Register. However, the validity of these documents submitted after the expiration of the prescribed deadline, can only be determined by the court in a court action, which may be instituted by third parties on the grounds of non-use of the patent within the 3 years period.

How does the content of a Declaration of non-use should be formulated in order to be considered as a Legal Excuse by the TPI?

For filing of a Declaration of Legal Excuse, the TPI requires the patentee to indicate the justifiable/legitimate reasons preventing him from putting the patented products/process in use in Turkey. The legitimate reasons of non-use of the patent shall be explained by the patentee himself in a declaration, which shall bear the name and the address of the patentee, the signature of a person authorized to sign on behalf of the patentee firm and needs to indicate absolutely the grant number of the patent, the title of the invention, the deadline of three years and mainly all the technical, economical and legal reasons of non-use of the patent. It is to be noted that according to Article 100 paragraph 2 of the Decree-Law No. 551 on patents all such "technical, economical or legal reasons" of "objective nature" developing "beyond the control and will of the patentee" (such as  “the patented product is still in development process and therefore not yet ready for the market”, the need for compliance with standards/ regulatory approval process and the need for new implementations in various fields) are deemed to be legitimate reasons for not working the patent.

It is also required by the TPI to insert into the Declaration of Legal Excuse an approximate time period whereby the patentee indicates when he intends to start the commercialization of the patented product/process in the Turkish market.

Such a Legal Excuse may be evidenced by supporting documents of non-use of the patent as ruled in amended Article 39 of the Implementing Regulation of 6 December 1998. Supporting documents can be copies of any official request filed with the regulatory authorities, i.e. Ministry of Health for obtaining a permission of marketing or any other documents without a confidential character evidencing that the patented product/process is still in clinical tests, experiences, etc.

Will the documents submitted to the TPI with respect to the working requirements be open to the public inspection?

Such documents are not published in the Official Patent Bulletin. However in case a third party is interested with the subject matter of a patent, he can file a request with the TPI by attending to the payment of a related fee and effect the examination of the file which may include such documents. In this way, we can conclude that these documents will be available to the public inspection.

Whereby the patentee has granted an exclusive license for the patent, should the declaration of Legal Excuse prepared by the patentee or the exclusive licensee?

There is no specific article pertaining to this point in the Decree-Law. According to the oral information we received from the responsible chiefs of the TPI and based on our previous experiences, in such a case the patentee or the exclusive licensee can either prepare the declaration of Legal Excuse. However if the licensee prepares the declaration of Legal Excuse, a declaration of authorization indicating that the patentee has granted an exclusive license should also accompanied the declaration of Legal Excuse.

Do the use requirements have to be repeated every year?

The use requirements namely the publication of an offer for licensing, recordal of the Certificate of Use or of the Importation Documents or of the Declaration of the Legal Excuse should be met only once within three years as from publication of the grant. By following one of the above actions, you comply with the use requirements for once and ever, thus these formalities are not required every year.

How does withdrawal of publication of an Offer for licensing affect the use-requirements?

When an offer for licensing is withdrawn, the working requirements of the patent become once again due. Precisely, when the withdrawal of the offer for licensing is in question, the patentee should evidence the use of the patent by other means provided in the Decree Law no. 551, i.e. filing of the Importation Documents, effective use of the patent by filing the Certificate of Use, etc. The patentee can withdraw, at any time, his offer for licensing provided that no person has demanded the patentee for the grant of a license (to use the invention). Withdrawal of the offer takes effect as from the date of filing before the TPI of the petition for the withdrawal of it.

What are the possible consequences of not fulfilling the working requirements?

The minimal specific action a patentee would need to take in order to fulfill the working requirements is the filing of a request with the TPI for the publication of an offer for licensing in the Official Patent Bulletin. In the absence of the prosecution of any course of action regarding the working requirements, it is to be noted that the patent cannot be ex-officio revoked by the TPI on grounds of non-use or failing to meet the working requirements of a patented product and/or process. The patent is not abandoned or invalidated due to the fact that no working requirement is met in the prescribed deadline of three years as from publication date of the grant decision. The possible consequence of not fulfilling the working requirement either by filing a Certificate of Use in case of effective use and /or Importation Documents in case of importation of the patented product/process into Turkey, by filing a Legal Excuse for non-use or filing a request for the publication of an Offer for licensing in case of non-use, would be a compulsory license which is however a procedure not actuated automatically by the TPI but the license being granted by courts upon request of third parties. Please note that the risk of a compulsory license is very rare in Turkey. Until now, there is only one case for which the court has granted a compulsory license.

What is the legal basis for the request of a compulsory license?

A compulsory license can be requested in accordance with the Article 99 of the Decree-Law No. 551 pertaining to the protection of the patent and utility model in Turkey: Compulsory license is (to be) granted where no offer for licensing has been made and where any one of the following situations/conditions materializes:

- Failure to put to use/work the patented invention;

- Dependency of subject matter of patents as mentioned in Article 79 :

This Article concerns the possibility of using the subject matter of a patent with the subject matter protected under a prior patent. The right holder of the prior patent and the right holder of the latter patent may not use the patent of the other party, without his consent, during the term of the validity of his patent. However the right holder of the latter patent may use also the prior patent upon authorization of the right holder of the prior patent or in case he has been granted compulsory license to use said prior patent.

-On grounds of public interest as mentioned in Article 103 :

According to this Article, the public interest constitutes one of the legal basis for the grant of compulsory license, as it is the case in the patent laws of several countries. The Council of Ministers decides for the grant of the compulsory license on grounds of public interest when the subject matter of the patent concerns topics like public health, national defense. Public interest shall be deemed to be involved where putting the invention to use, increasing or, generally spreading, its use or improving same for a useful end are of great importance for public health or national defense purposes. Situations where the non-use of the invention or its insufficient use in terms of quality and quantity, causes serious damage to the country's economic or technical development shall be deemed to also involve public interest.

For the request of a compulsory license by a third party, according to the Article 100 of same Decree-Law "any interested person may after the expiration of the period foreseen in Article 96, request the granting of a compulsory license on the grounds that the patent, at the time of the request, was not put to use or that the delay in the use thereof was not due to justifiable/legitimate reasons or that the use thereof had been suspended during an uninterrupted period of 3 years without justifiable/legitimate reason".

On which basis the rate and the royalty are calculated in the Offer for licensing compared to the compulsory license?

In the offer for licensing, the relation between the parties is a contractual license if they agree on the terms and conditions of the license. Consequently the royalty as well as the rate of same are determined between the patentee and licensee.

Such a license agreement can only be finalized if the parties agree on the terms of such an agreement. Where the patentee and the candidate licensee cannot agree on the amount of the royalty or other contract terms, the matter is referred to the court. At this stage, the court will decide on the royalty and other terms on the agreement, so far as it is necessary. The license granted on an offer for licensing is a contractual license agreement, whereas the compulsory license as is a procedure not actuated by the TPI, the license is granted by courts upon the request of third parties and in such case, the terms as well, the royalty rate are determined by the court.

Does the use requirements of the patent apply also to the utility models?

The Decree-Law No. 551 pertaining to the protection of the patents and utility models states that in case any provisions specifically applicable to utility models are absent, the provisions pertaining to patents as set forth in the subject Decree-Law shall apply likewise, for utility model certificates, provided that they are not incompatible with the characteristic of utility model certificates. Therefore, the use requirements have to be fulfilled within the time period of three years as from the publication date of the grant decision of the utility model in the Official Patent Bulletin.

Should you require further information or clarification on the above matter please do not hesitate to refer back to us immediately. Looking forward to receiving your instructions in this regard well before the relevant deadlines in order to guide you in the appropriate manner.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
View Template
Click to View the Template
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Supporting Documents
Other Turkey Advice Centres
Competition and Antitrust
Tax
Privacy and Data Protection
More Advice Centers
Useful Resources
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
The national Turkey group for the International Association for the Protection of Intellectual Property.
Upcoming Events
This site provides access to information about meetings held at WIPO and related documents comprising a detailed meeting calendar and a powerful document search facility.
A calendar of past and future events held by the Turkish Patent Institute.
Information about events and classroom training, online training, the European qualifying examination, and other materials.
From the Annual Meeting to local forums, roundtables and digital learning, INTA's Programs and Events help you stay up to date on issues that affect your brands.
Tools
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.