Pursuant to the Regulation Indicating the Implementation of the European Patent Convention Regarding the Grant of European Patents in Turkey ("Regulation"), a European patent application in which Turkey is designated is accepted as a national Turkish patent application starting from the moment an application number is given by the EPO. Once the application is filed before the EPO, normally, the patent owners pursue the procedure before the EPO and once the patent is granted continues with the validation of the European patent in the designated states. Although the EPO should publish the European patent application after the expiry of a period of eighteen months from the date of filing, there is no such requirement in Turkish IP Law ruling that the European Patent application in which Turkey is designated, should be published on the bulletin of the national office while the application is pending. Consequently, in most cases, the patent applicants skip the publication of the Turkish translation of the European Patent application and the application first enters into the records of the Turkish Patent Office after the grant decision of the EPO.
On the other hand, the Regulation states that although a European Patent application in which Turkey is designated is deemed as a national patent as of date of application; for the patent owner to benefit from the "protection" conferred for the patent applications, the Turkish translation of the claims must be published in accordance with the Regulation or the applicant must have notified the third party using the invention in Turkey with the Turkish translation of the claims.
At this point, especially when the period between the date of patent application and the date of publication of the Turkish translation of the application is prolonged due to various reasons, the question arises starting from which point of time the patent owner can claim compensation for damages. In one of the example cases, the European patent application -in which Turkey was designated- was given an application date in 2020; however, the Turkish translation of the claims were published first in 2022. The allegedly infringing acts of third party started as of 2020 in Turkey, so the patent owner questioned if it could claim for damages as of 2020 or 2022.
The IP Law and the Regulation clearly rules that to benefit from the protection provided for a patent application, either the claims must be published or the allegedly infringing third party must be informed of the application. As a result, to claim compensation based on a European patent right in which Turkey was designated, the Turkish translation of the application must be duly published in Turkey. For this reason, if the patent application is recorded -and presumably acknowledged as a right- but not published and therefore could not gain the protection yet, even the act of infringement has started before, compensation can only be claimed for the time period after the publication of the Turkish translation of the claims.
In this respect, it is important not to rely on the mere fact that Turkey has been designated in the European patent application for the claim of compensation of the damage suffered over a period of time, and to cover damage sustained for as long as possible, it is clear that the Turkish translation of the claims should be published as soon as possible, without waiting for the decision of the EPO to grant or reject the application. Even if the publication of the translation will be delayed for any reason, the written notification of the invention to the third parties who are likely to infringe the patent or who have already started infringement actions will enable the patent owner to claim compensation.
Another important point to consider is "statute of limitations" to demand compensation for the damages. Since the patent infringement act is kind of a tortious act, the provisions of the Code of Obligations regarding tortious acts will apply in terms of the statute of limitations. Accordingly, a compensation action due to patent infringement should be filed within two years, starting from the date on which the patent owner learns of the damage and the liable person for compensation, and in any case in ten years, starting from the date of the act. Thus, there is a general statute of limitations of 2 and 10 years for a compensation action due to patent infringement.
A distinction must be made, between the time period in which a compensation action can be filed and the time period during which damages can be demanded. According to the case law, for the cases of determination, suspension and prevention of patent infringement, the statute of limitations will not run as long as the infringing acts continue. However, an action for compensation of damages caused by patent infringement can only be filed within the general statute of limitations, that is, after the above-mentioned conditions initiating the statute of limitations are fulfilled, the statute of limitations begins to run regardless of whether the patent infringement continues or not. In this case, in order to be able to claim compensation for damages arising from patent infringement, it is crucial to accurately determine the moment that initiates the statute of limitations, that is, the date when the damage will be deemed to have been learned. In the doctrine, it is accepted that in order for the damage to be acknowledged to have been learned, the information that will determine its existence, quality and basic elements must have been learned to the extent that it can be sued. Considering the case law, although there is no stable Supreme Court practice, it is seen that the date of conclusion of the infringement action is taken as the learning date for claiming compensation, and in our opinion, this is an appropriate approach. However, since it is seen that the Supreme Court may adopt a narrower interpretation in some decisions, in other words, it can detect that the statute of limitations started earlier than the conclusion of the patent infringement action, it is important to make a careful evaluation for each concrete case in order not to put the right to claim compensation at the risk of statute of limitations.
Consequently, when it comes to claims for compensation arising from patent infringement, serious loss of rights can be faced both from the legislation and from the interpretation of the legislation by the high courts. In this respect, a comprehensive legal assessment is of great importance in order to avoid loss of rights, especially in claims for damages based on patents originating from European Patents in Turkey. The applicants should better choose to have the Turkish translation of the claims published in Turkey to be on the safe side when it comes to compensation of damage due to patent infringement.
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.
