Turkey: The Protection Of Patents And Utility Models In Turkey According To The Decree-Law No. 551 In Force As From June 27, 1995.

This information circular is the updated version of our circular letter dated December 20, 1995 based on Decree-Law No: 551 in force as from June 27, 1995 pertaining to the protection of patents and utility models in Turkey.

Transitional Article 1, provides that the patent applications filed prior to the entry into force of the new Decree-Law No. 551 on June 27, 1995 will be prosecuted according to the provisions of the former Patent Act.

Articles 39 to 47 pertaining to the Penal Prosecution and Penalties of the former Turkish Patent Act have been maintained in force in respect of the new Decree-Law No. 551 until the enactment on November 7, 1995 of the Law No. 4128 amending and bringing into it new provisions pertaining to Penalties and Penal Prosecution.

The Implementing Regulation for this Decree-Law came into force on November 5, 1995 and amended on December 6, 1998 following their publication in the Official Journal of same dates.

1/1. Regarding the Paris Convention, Turkey has been a signatory of the (1934) London Text until the decision of the Council of Ministers dated July 29, 1994 and published in the Official Gazette of September 23, 1994 with which TURKEY has become a signatory of the (1967) Stockholm Text which fully applies with effect as from February 1, 1995. Therefore, the priority term of 12 months applies for patents and utility models.

1/2. Furthermore, as from the publication on July 12, 1995 in the Official Gazette of the Law No. 4115 dated July 7, 1995 Turkey has become a signatory and party to the patent cooperation treaty as signed in Washington on June 19, 1970 and as amended on October 2, 1979 and on February 3, 1984. PCT has started being applied for Turkey as from January 1, 1996.

1/3. In addition to the above, Turkey joined Strasbourg Agreement concerning International Patent Classification (IPC) on October 1, 1996.

1/4. Turkey also has become a signatory of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms as of August 22, 1997.

1/5. As from the publication on January 29, 2000 in the Official Gazette of the Law No. 4504 dated January 27, 2000 Turkey has become a signatory and party to the European Patent Convention.

1/6. Kindly note that Turkey being presently a signatory of GATT, the provisions of the TRIPS Agreement apply to this country.

1/7. Turkey has availed itself to Articles 65 and 70/8 of the GATT/TRIPS Agreement in that under Transitional Article 4 of the Decree-Law No. 551, patent protection in respect of inventions pertaining to pharmaceutical and veterinary products per se and their process of manufacturing has effect as from January 1, 1999. However, Turkey has started accepting since January 1995 the filing of such black-box applications, which were prosecuted along similar procedural phases applying to other applications for patent filed in this country. The only difference being that all such black-box applications having reached the stage of grant were upheld until January 1, 1999, the date after which the Letter’s Patent were issued.

2. In respect of pharmaceutical products prepared in the pharmacies upon prescription, reference needs to be made to the exemption provided in Article 75(c) reading as follows:

"The following acts shall remain outside the scope of the rights arising from patent. (The rights conferred by the patent shall not extend to).

(c) Extemporaneous preparations of medicines in pharmacies, involving no mass production, carried out singly in making up a prescription and acts related to the medicines thus prepared".

3. The following persons are entitled to protection and thereby qualified to obtain registration of their patents / utility models in Turkey according to Articles 2 and 4 of the Decree-Law No. 551 reading as follows :

"Article 2: The protection conferred by this law is available to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or to the persons entitled to file applications, under the provisions of the Paris Convention.

Natural or legal persons other than those referred to in the first paragraph of this Article, who are nationals of states which accord legal or de facto protection to the nationals of the Republic of Turkey shall enjoy, according to the reciprocity principle, patent and/or utility model protection in Turkey.

Article 4: Where the International Agreements having entered into force according to the Laws of the Republic of Turkey contain provisions which are preferential/more favorable than those of this present Decree-Law, the persons referred to in Article 2 may request to benefit from such preferential/more favorable provisions."

4/1. Decree-law no: 551 on patents and utility models provides for three types of protection, namely:

• A patent without (substantive) examination for a period of 7 years from the filing date of the application in turkey.
• A patent with (substantive) examination for a period of 20 years from the filing date of the application in turkey.
• A utility model of 10 years from the filing date of the application in turkey.

4/2. Decree-law provides for the possibility of converting a patent, irrespective of its term of protection, into a utility model and vice-versa.

4/3. Processes and products obtained by said processes as well as chemical products cannot be subject of utility model protection according to article 155 of the decree-law no. 551.

5/1. According to Article 173 of the Decree-Law No. 551, the annuities of the patents/utility models as well as of the applications currently under prosecution are to be paid yearly by the anniversary of the date of filing of the application.

5/2. With regard to the annuities of national phase applications under PCT Chapter I or II, annuities are paid yearly by the anniversary of the international filing date and the 2^nd annuities are paid during national phase entry as accumulated annuities.

6. It is possible to file under the same patent application method claim(s) and apparatus/product claim(s) provided the unity of the invention does not suffer. In the negative, the Turkish Patent Institute (T.P.I.) will request the filing of divisional application(s) for each subject matter.

7/1. According to the last paragraph of Article 42 of the Decree-Law 551, the description and claim(s) may be filed in English, French and German simultaneously with the application. A term of one month and a further period of 3 months shall be given for translating them into Turkish and filing the Turkish translation before the Institute or an authority designated by it without the need to extend (to the applicant) any further notice to this effect.

7/2. According to Article 5, paragraph 4 of the amended Implementing Regulations dated December 6, 1998, after expiration of the 20- or 30-month periods for entering the national phase in Turkey, 3-months extension period is provided with a 50% fine of the official filing fee. This means that applicants may enter the national phase in Turkey within 20+3 or 30+3 months.

8. An application for patent/utility model will follow the following procedural phases:

8/1. Irrespective of the term of protection of 7 or 20 years, the State-of-the-Art (Standard) Search is to be conducted for patent applications which otherwise shall be deemed to have been withdrawn (Article 56 parag. 4) in case, the request for (Standard) Search is not filed within 15 months from the date of filing of the application in Turkey or, from the date of the priority, if any, claimed in the application and, in case the (Standard) Search fee is not duly paid within the subsequent three months.

The paragraph one of Article 28 of the implementing regulation of November 5, 1995, provides that the fee for conducting the State-of-the-Art (Standard) Search can be paid within three months subsequent to the filing of the request for (Standard) Search before T.P.I.

It is important to note that both of these deadlines cannot be extended.

PCT applications entering into national phase in Turkey are not subject to this search procedure since International Search Reports are readily accepted by the T.P.I.

8.2/1. According to Transitional Article 2 of the Decree-Law No. 551, "the State-of-the-Art (Standard) Search Report" is to be established by the internationally recognized Search Authorities until the time when T.P.I. completes its organization permitting it to establish such reports." Transitional Article 4, paragraph 2 of the implementing regulation which was amended on December 6, 1998, provides that "the (Standard) Search Reports established by the Search Authorities designated under the Patent Cooperation Treaty or Search Authorities conducting the search on behalf of the TPI under special protocols on the (corresponding) patent application(s), the priority of which has/have been claimed in the application filed in Turkey, will be accepted by T.P.I. for the prosecution of the Turkish application."

8.2/2. To prosecute the Turkish application further it will suffice to file the request for (Standard) Search within the above referred period of 15 months by simultaneously submitting in the attachment thereof the copy of the (Standard) Search Report established by anyone of the above mentioned Search Authorities, on the corresponding priority application(s) and by simultaneously paying to T.P.I. the fee of Deutsche Marks 500.- for the assessment and evaluation of the (Standard) Search Report as retained under the Schedule of Official Fees which came into force on January 23, 2001.

Along with your instructions for timely filing the request for conducting the (Standard) Search, you are kindly requested to send us, where available, the copy of the State-of-the-Art (Standard) Search Report established by anyone of the above mentioned Search Authorities on the corresponding priority applications, if any.

8.2/3. In cases, where the (Standard) Search Report on the corresponding priority applications is not available at the date when the request for (Standard) Search comes up for filing within the above referred period of 15 months, such request will still have to be filed within the set time period of 15 months by indicating that the corresponding (Standard) Search Report is not available as yet and will be submitted at a later date upon its issuance, by the respective search Authority.

In cases, where the request for (Standard) Search is filed without the corresponding (Standard) Search Report, the fee of Deutsche Marks 500.- will not have to be paid to T.P.I. simultaneously with the filing of the request for (Standard) Search, but when filing, at a later date, the (Standard) Search Report issued by the respective Search Authority. (Transitional Article 4, parag. 3 of the implementing regulation of November 5, 1995).

8.2/4. In cases, where there is no corresponding (Standard) Search Report from the above mentioned Search Authorities on the corresponding priority application(s), T.P.I. will see to have such a report established by one of the search authorities conducting search on behalf of the TPI under special protocols. The list of said authorities is available in the attachment together with the respective fees. The applicant is to select as of its preference the search authority which is to conduct the search on behalf of the TPI.

In such case, the fee for establishing the (Standard) Search Report requested by the selected search authority according to the new Schedule of Official Fees of January 23, 2001, will have to be paid to T.P.I. as well as the handling fee of the TPI amounting to DEM 200.- simultaneously with the filing of the request for (Standard) Search, in order to simplify and accelerate the prosecution of the application.

However, if so wished, the fee for establishing the (Standard) Search Report can be paid within the three months subsequent to the filing of the request for conducting the (Standard) Search in accordance with Article 28, parag. 1 of the implementing regulation of November 5, 1995.

It is important to note that this deadline cannot be extended.

T.P.I. will settle directly with the selected search authority the search fee that said authority will be charging for conducting the search and establishing the State-of-the-Art (Standard) Search Report.

8.2/5. As T.P.I. for the moment being does not issue invoices before the payment of the concerned fee, the (Standard) Search fee is to be paid even when no invoice has been, as yet, issued by T.P.I. in this regard.

The above indicated Standard Search Fees are to be paid, in the requested currencies, to T.P.I..

8/3. It is not mandatory to conduct a State-of-the-Art (Standard) Search for Utility Models. According to Article 160 last parag., such (Standard) Search can be carried out upon request of the applicant or registrant of the utility model.

8/4. The application is published after the elapsing of a period of 18 months from the date of filing of the application in Turkey or from the date of priority, if any, claimed in the application. The application is published following the completion of the formal examination and subsequent to the filing of the request for the State-of-the-Art (Standard) Search (Article 55, parag. 1). If not published earlier, the application is published together with the State-of-the-Art (Standard) Search Report according to Article 57, last parag.

8/5. According to Article 59, the applicant for a patent disposes of 3 months from the notification to him of the State-of-the-Art (Standard) Search Report for deciding which of the types of patent with or without (substantive) examination he wishes to choose. It is after the elapsing of this time period of 3 months during which the applicant is to determine the type of patent he wishes to choose, that the State-of-the-Art (Standard) Search Report is published in the Official Patent Bulletin wherein it is specified that the subject application concerns a patent with or without (substantive) examination. (Article 57, parag. 5 and 6). Where the applicant does not respond within this period of 3 months and determine the type of patent he wishes to choose, the patent application is considered and further prosecuted as a short term patent of 7 years without (substantive) examination. (Article 59, last sentence).

Applications entering into national phase in Turkey under PCT Chapter II are automatically prosecuted according to patent system with (substantive) examination whereas for applications entering into national phase in Turkey under PCT Chapter I, applicant has the option to choose either of the patent systems as indicated above.

8/6. Following the publication of the Standard Search Report in the Official Patent Bulletin, third parties can raise opposition against the patent application within the subsequent 6 months. (Article 60, parag.1 and Article 62, parag. 2). The period of opposition is 3 months for the utility model application following the publication of the application in the Patent Bulletin. (Article 161, parag. 1).

8/7. For the short term protection of 7 years, the applicant for a patent without (substantive) examination is free to take or not into consideration the observations/arguments put forward by the opponent(s). The applicant can respond to the objection/observation of the opponent(s) and, if he so wishes, can amend the claim(s) in consideration thereof within 3 months from the notification of the opposition. Where the applicant has not filed a response to the opposition/objection with or without amending the claim(s) within this period of 3 months, T.P.I. proceeds further by deciding to grant the "patent without (substantive) examination" for a term of 7 years from the date of filing of the application in Turkey.

8/8. The "patent without (substantive) examination" of 7 years can be converted into a "patent with substantive examination" thereby extending the period of protection to 20 years provided that the request for substantive examination is filed within 7 years, at the latest, from the date of filing of the application in Turkey. Such request for (substantive) examination can be filed either by the patentee or by third persons. The examination fee is to be bourn by the party namely the patentee or third persons having filed the said request for (substantive) examination (Article 60, parag. 7).

8/9. According to Article 62, parag. 3, in case, the applicant opts for a patent with (substantive) examination, the request for substantive examination is to be filed and the Examination Fee is to be paid by the applicant within a period of 6 months following the publication in the Official Patent Bulletin of the State-of-the-Art (Standard) Search Report.

8/10. According to Article 62, parag. 2, third persons can raise opposition against the patentability of the application within 6 months from the publication of the State-of-the-Art (Standard) Search Report.

8/11. The applicant disposes of 3 months, with a possible extension of 3 additional months, subsequent to the 6 months opposition period for responding to the opposition(s) notified immediately to him by T.P.I. according to Article 62, parag. 4.

8/12. T.P.I. initiates the (substantive) examination after the elapsing of the period of response of the applicant (3 months + 3 months) as provided in Article 62, parag. 4.

8/13. According to Article 62, parag. 5, the fact that the applicant has not responded to the opposition(s) within the set period of response will not stop the initiation of the (substantive) examination.

8/14. T.P.I. notifies the results of the (substantive) examination to the applicant. In case this (substantive) examination report holds objections on patentability, the applicant is to file a response within the subsequent 6 months simultaneously with a request for second examination. In case the second examination also involves objections, the T.P.I. notifies the applicant of its decision by recognizing him the possibility of a further reply within the subsequent 3 months in which period a third (final) examination should also be requested.

8/15. For applications entering into national phase under PCT Chapter II, the International Preliminary Examination Report (IPER) is accepted as the first (substantive) examination report by the T.P.I. Accordingly, in case this report recognizes patentability for the entire claim set, the application is immediately granted. On the other hand, in case there are any objections in IPER, procedures explained above in point 8/14 are to be applied.

9. According to Article 146, paragraphs 1 and 3, in all court actions(to be) instituted in accordance of the Decree-Law No. 551 and against all decisions of T.P.I. in implementing the provisions of the Decree-Law No. 551, the Competent Courts shall be the Specialized Courts to be set-up by the Ministry of Justice.

According to paragraph 2, of Article 146; until the setting-up of such specialized courts by the Ministry of Justice; the Supreme Council of Judges and Prosecutors has determined the Commercial and Criminal Courts of First Instance which will function as specialized courts.

At the moment, for the jurisdictions other than Istanbul, in the jurisdictions having more than one penal and/or commercial court, according to the decision of the Supreme Council of Judges and Prosecutors, the 3^rd Penal Court hears the penal actions for all Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction.

As far as the Istanbul area is concerned, with the Decision No. 59 dated January 25, 2001 -published in the Official Journal of February 01, 2001 / No. 24305- of the Supreme Council of Judges and Prosecutors the specialized "Istanbul Court for Intellectual and Industrial Property Rights" has been set up in the city of Istanbul which will be competent in all Industrial and Intellectual Property matters.

10. With the enactment of the package of new Industrial Property Legislation under various Decree-Laws, of which No. 551 concerns Patents and Utility Models, Article 21 has been newly added to the Customs Act No. 1615 to permit, upon complaint, the seizure/withholding, by the customs, of goods infringing intellectual and/or industrial property rights, and among them patents and utility models under protection in Turkey. The withholding is lifted and the customs formalities proceed further unless a court action for patent infringement is duly instituted or an interlocutory injunction is ordered by the court within 10 days from the date of the withholding by the customs.

11.1/1. The new Decree-Law No. 551 on Patents and Utility Models provides for an "Obligation to Work/Use" under Part VI - Section IV.

11.1/2. In case, the patent is effectively put to use/worked in Turkey, further to the filing of the "Certificate of Use", attesting such use, or "Importation Documents" in lieu thereof, evidencing the importation of the patented subject matter into Turkey, it will not be necessary to effect any other working formality, whether nominal or otherwise, for keeping the patent valid and in force.

The Certificate of Use shall include the registration date and number of the patent, the title of the invention, date of start of use of the patent, name, address and signature of the person providing the declaration of use and date of issuance of the Certificate.

The Certificate of Use and Importation document are recorded in the Patent Register. For this action, the fee indicated in the Schedule of Fees is to be paid."

11.1/3. In the event that the patent is not put to use/worked in Turkey within the term prescribed under Article 96, the patentee is to apply to T.P.I. requesting the publication of an "offer for licensing" in compliance with the provisions of Part VI, Section III of the Decree-Law, the full translation of which is herewith enclosed.

T.P.I. will publish in the Patents Bulletin the "offer for licensing" and transmit to the patentee the application(s) from the candidate licensee(s). 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 T.P.I. for the publication of the "offer for licensing" by the end of the period of use of three years as 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 Article 5 of the Paris Convention on the matter.

11.1/4. Where the patent is not used due to valid/legitimate reasons, in accordance with amended Article 39 of the Implementing Regulation of 6 December 1998 the patentee has the right to file with the Turkish Patent Institute documents and information explaining the legal excuse of objective nature causing the non-use of the patent. Such a legal excuse is not accepted without evidencing supporting documents. The English translation of said Article reads as follows:

"The patentee or the person authorized by the patentee is obliged to use the invention subject to patent protection. The compulsory use shall be effected within 3 years as of the publication of the grant of the patent in the official Bulletin. The evaluation of the use is effected with view of the market conditions. Objective authorizations, compliance to standards, technical or economical or legal reasons like need for making new applications on various fields can be accepted as valid reasons for the non-use of the patent. These reasons accepted as preventing the use of the invention subject to patent are reasons out of the control and will of the patentee. Information and documents relating to the valid reasons for the non-use of the patent shall be filed by the patentee with the T.P.I. within 3 years as of the publication date of the grant of the patent in the official Bulletin and shall recorded in the Patent Register. For this action, the fee indicated in the Schedule of Fees is to be paid."

11/2. In the absence of actual/effective working in Turkey, or of an "offer for licensing" the new Decree-Law No. 551 provides for "compulsory license" under Part VII.

In this regard, Article 99 provides that:

"Compulsory license is (to be) granted where no offer for licensing has been made and where any one of the following situations/conditions materializes:

1. Failure to put to use/work the patented invention in accordance with Article 96;
2. Dependency of subject matter of patents as mentioned in Article 79;
3. On grounds of public interest as mentioned in Article 103."

11/3. Furthermore, Article 93 of the Decree-Law No. 551 rules "where a patentee commits an act in violation of the general provisions on unfair competition while putting his patent (application) to use, the court may condemn the patentee to offer his patent for licensing". Therefore, in order to avoid such developments, the concerned articles are to be marked as "patented" or "patent pending" only when there exists a valid Turkish patent or an application for patent, in respect thereof.

12. The Decree-Law No. 551 provides for the Secret Patents under Part VIII - Articles 125 to 128.

13. As To The Priority Document :

According to Article 52, parag. 1 of the Decree-Law No. 551, "the priority shall be deemed not to have been claimed if the priority document (attesting same) is not submitted within three months as from the date of filing of the application (in Turkey)".

This Deadline Cannot Be Extended.

In case the certified copy of the claimed priority is not filed before T.P.I. by this deadline, the application is further prosecuted as a non-convention application.

14. As to the Power of Attorney :

At present, it is not any more necessary and compulsory to file the Power of Attorney whether simultaneously with the application, as it was the case under the earlier practice, or thereafter, for validly filing and prosecuting a patent or a utility model application in Turkey.

15. In so far as the relation between the applicant and the inventor(s) is concerned, according to Article 44 of the new Decree-Law No. 551, it is necessary to indicate in the filing petition:

• the names, address(es) and nationality(ies) of the inventor(s),
• whether or not the applicant is the inventor,
• in case the applicant is not the inventor, the (legal) instruments/means by which the applicant has obtained from the inventor(s) the right to apply for a patent.

In the filing petition form prepared by T.P.I. the name(s), address(es) and nationality(ies) of the inventor(s) must be cited by also indicating the (legal) instruments/means through which the applicant declares to have the right to apply for a patent in case he is not the inventor.

According to the Decree-Law No. 551 and the resulting current Administrative practice, this information pertaining to the (legal) relation between the inventor(s) and the applicant as to the ownership of the invention and to the right to apply for a patent, is to be supplied on a declaratory basis. At present, no documentary evidence is required to be submitted in support of the declaration (to be) effected in this regard.

According to the provisions of Article 44 of the new Decree-Law, in case the name(s) of the inventor(s) and the (legal) instruments/means through which the applicant declares to have the right to apply have been omitted to be indicated in the filing petition, the formal examination of the application will not be initiated, for as long as this declaration/information remains outstanding.

In your instructions for filing in this country patent/utility model applications, you are, therefore, kindly requested to give us the information pertaining to the inventor(s) and their relation to the applicant(s) in respect of the invention for which the application is to be filed in turkey.