European Union: Interpretation Of Force Of EPC And Institutions Of EPO By Turkish IP Courts

Last Updated: 3 August 2016
Article by Selin Sinem Erciyas and Ozge Atilgan Karakulak

The European Patent Convention (EPC) is a part of Turkish national domestic law and is enforced in Turkey under Article 90 of the Turkish Constitution. Furthermore, it was formed under international agreement and as a result cannot be claimed as unconstitutional.

The EPC law can be applied directly in Turkey and therefore it is legally binding. Alongside other member states, Turkey also declared and signed the EPC and as such recognises the competence and the decisions of the institutions which have been introduced in the convention. It is assumed that the member states are not able to declare their commitment for certain bodies of the European Patent Office (EPO), such as decisions only made by the examination division or appeal board. This may seem an unusual statement, however, it should be stressed as it is one of the most important proceedings in Turkey, it has been argued by IP courts that EPO decisions are only binding for Turkey if the decision can be grounded on an explicit provision in the EPC.

However, in some situations IP courts interpret the EPC in such a way that renders it ineffective. For example, in an invalidation action filed against a European patent, the IP court did not conduct any examination on patentability requirements and decided that this patent is null and void as the independent claim is a second medical use claim, however, the patent was granted before EPC 2000 revisions, that is, before Article 54/4 and 54/5 on second medical use claims were introduced in the EPC.

Since it is known as a party to the EPC, Turkey transfers its authority on patentability examination and grant decisions of the European patent applications to the EPO. Accordingly, European patents granted by the examination division of the EPO enter into the national phase before the Turkish Patent Institute (TPI). Furthermore, with regard to the filing of the Turkish translation of the official bulletin, the European patent is granted by the TPI as a final granted national patent.

However, the European patent, validated and granted in Turkey via this route, is situated somewhere in between the EPC and Turkish national law due to the differences between two systems. Unfortunately the interpretation of the IP courts cannot be used to help a European patent to be in a more justified position.

The main reason for this is that Turkish patent law introduces a pre-grant opposition system and therefore it does not allow any amendment of the patent after the grant decision has been made, with the exception of material mistakes made in the patent. Whereas the opposition procedure starts after the grant decision before the EPO and the opportunity is given to amend/limit the European patent during this period.

As an international agreement, the EPC is applied with priority in Turkey and therefore the European patent is allowed to make amendments/limitations due to the amendments carried out before the EPO, although the same right is not given for national applications. This exists as a form of conflict in the system however the outcome of this is mostly experienced in invalidation actions which are filed against European patents validated in Turkey.

According to Turkish Law, only a patent that is ultimately granted can be subject to an invalidation action. In other words, patent applications are not considered as concluded and therefore they cannot be subject to an invalidation action. Our interpretation is that the legislator has hereby foreseen the effects of the ‘pre-grant’ opposition system in Turkish Law and the possibility to amend the patent until the final grant decision is made. This would result in uncertainties emerging in the scope of protection of the patent in the case of a court action, which means an invalidation action is filed against a pending application.

On the other hand, the European patents which were granted in Turkey right after the first grant decision of the EPO become immediately subject to invalidation actions. This is because although first grant decisions made by the EPO seem to be final, the final scope of protection is still not determined due to the ongoing opposition/appeal procedure that takes place before they reach the EPO.

In these actions, the European patent holder refers the ongoing procedure before the EPO and demands for the delay of the invalidation proceedings. However, in most cases such a demand is rejected, without considering what will happen if the patent is maintained in an amended form by the EPO after the national court orders for invalidation of the Turkish validation of the same patent. We are of the opinion that the patent maintained before the EPO is entitled to be re-validated in Turkey which therefore means that the IP court trial on the ex-version of the patent will be entirely useless. The same would apply if the patent is revoked by the EPO before the national invalidation action is concluded.

In a similar case where the European patent was prematurely made subject to an invalidation action, the Supreme Court finally considered our arguments and overruled the court of first instance decision on the grounds that the Court should have asked the TPI whether a European patent subject to an invalidity action in Turkey should be deemed in the application stage or granted status if the opposition/appeal procedure before the EPO is still ongoing at the date of the action.

The court of first instance has not set a decision on this yet, however the matter has been discussed at an international conference in Istanbul by one of the most experienced IP court judges. Upon query whether it is necessary for the judge to consult this matter with the TPI as ordered in the Supreme Court decision, the judge stated that he can decide about this issue by himself and moreover he is of the opinion that European patents which are under the EPO process should not be made subject to invalidity actions. In other words, the conclusion of the EPO process should be awaited with regards to these actions.

However, the same judge stated that the decision to wait for the conclusion of the EPO procedure may prove problematic due to the lengthy opposition and appeal processes which, in some cases, can take between four and six years. A very important comment made by the judge was on the balance provided in the German system for such situations. Since there is not a ‘bifurcated’ system in Turkey unlike in Germany, delaying the invalidation action may provide the patent holder with an unfair advantage since the same patent can be enforced against third parties in the form of a finally granted patent.

Although there may be timing issues in applying the EPO decision or delaying a national decision on a European patent until the EPO’s final decision, the IP courts and the Supreme Court is of the same opinion that the EPO is the decision maker regarding the European patents and the decision of the EPO is binding for Turkey.

This clearance is nonetheless vital and should be emphasised; however, this point of view is not adopted by one of the IP judges in Istanbul in relation with the decisions of the EPO EBoA and the European patents granted by the EPO in light of the case law of EBoA.

This particular IP court judge ruled on an infringement action depending on a second medical use claim of a European patent that this European patent granted before EPC 2000 amendments has ‘Swiss-type’ claims and therefore it is essentially related to a medical treatment method, and methods for treatment are not patentable inventions according to Article 52(4) of EPC 1973, however, the EPO had granted patents to such medical treatment methods relying on G5/83 decision of EBoA, established by by-passing the provisions of the EPC. According to the court decision, ‘even if Turkey was a party to EPC, EBoA decisions were not binding for Turkey’. Therefore the European patent in question was considered to be related to a ‘medical treatment method’ and should be declared null and void in Turkey.

The IP court evaluated that paragraphs 4 and 5, brought to Article 54, with EPC 2000 revisions, constituted an exception to Article 52(4) of EPC 1973 and opined that only after the EPC 2000 revisions had it become possible to protect such ‘medical treatment methods’ with a patent.

At this point, it is beneficial to mention that the same point of view has not been adopted by the other IP judges or by the Supreme Court in Turkey. In fact the reasoning of the Supreme Court is a milestone in Turkish patent law as it bars the legal ambiguity about legitimacy of the second medical use patents and acknowledges the legitimacy of such patents in Turkish patent law.

A rather noteworthy interpretation in the IP court decision was related to the legitimacy of the European patents granted due to case law of EBoA. The IP court is of the opinion that Turkey is only bound with the EPC not with the EBoA. EBoA decisions are binding on BoA, which hears appeal proceedings and BoA decisions are binding on the department, whose decision is appealed. As long as the facts, constituting grounds for decision are the same, a dissenting decision may only be given by providing grounds. In this respect, it cannot be said that the decision of an EPO examination and/or opposition division, which resulted with the grant of a patent in line with EBoA decision, was from a lack of legal basis and therefore the patent in question was null and void.

On the other hand, the EBoA case law on second medical use claims clearly has its grounds in the EPC of 1973. This was also touched upon in the Supreme Court’s decision. The Supreme Court acknowledged that there was no explicit provision for second medical use in EPC 1973 and it was first introduced to EPC in 2007. However, second medical use claims were protected as per G05/83 of EBoA.

The Supreme Court, very cleverly, argued that the root of the issue was that it was an invalidity argument in dispute and it needed to be evaluated as per Article 129 of the Patent Decree Law in Turkey. Therefore, the Supreme Court focused on the provisions of the Decree Law and noted that the Decree Law has not been amended during EPC 1973 and EPC 2000. In this respect the patentability requirements and non-patentable inventions defined in Decree Law have not been changed and remain the same today.

Finally, the Supreme Court stated that as there was no explicit provision at the date of grant of the patent in discussion related with the patentability of the second medical use claims, the validity of the patent should be evaluated as per usual to general requirements of novelty, inventive step and industrial applicability. In accordance with this, the first instance court should have evaluated if the patent in question possesses novelty over prior art irrespective of whether it is a second medical use patent or not.

The Supreme Court has apparently emphasised that Turkish law does not exclude second medical use patents from patentability. In fact, it remarkably ruled that there was no actual difference between the EPC 1973 and EPC 2000 in terms of second medical use patentability, thereby essentially allowing second medical use patents granted before the entry into force of the EPC 2000.

Although there appears to be a discrepancy in interpretation of the force of the EPC by different IP courts, our experience indicates that mostly by help of Supreme Court’s ruling, the EPC still very much holds an international position and maintains power over national law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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

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

Selin Sinem Erciyas
Ozge Atilgan Karakulak
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”

Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (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

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’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.


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.


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 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.


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.


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.


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.


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

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

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

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