- The Industrial Property Code No. 6769 (the IP Code), which was prepared by the Turkish Patent and Trademark Office (the Office), is the main legislation in Turkey codifying all kinds of IP rights in Turkey. The IP Code which has abolished previous IP related Decree-Laws entered into force on 10 January 2017 upon publication in the Official Gazette.
- The IP Code regulates all IP rights in a single code. It is divided into five chapters, and the first four chapters of the law relate to trademarks, geographical indications, designs and patent rights, respectively. The principles, rules and conditions regarding the protection of patents are stated in Book 4 of the IP Code.
- Even though the Law abolished the IP related Decree-Laws, according to provisional Article 1 of the IP Code, provisions of the Decree-Laws will be implemented for applications filed before the enforcement date of the Code until their registration processes complete.
- Indeed, the IP Code was prepared to achieve harmony with recent developments in European Union (EU) IP law, to restore the gaps due to the decisions of the Constitutional Court annulling various provisions of the Decree-Laws and to make the relevant regulations clearer, more understandable and more systematic, as stated in its preamble.
- The IP Code also refers to the provisions of the Code of Civil Procedure numbered 6100 (CCP) which is the main legislation regulating the procedural rules for civil actions; thus, CCP also applies in IP matters.
- Turkey, as a member of Customs Union, has acceded to almost all international treaties relating to the field of IP. Of these treaties, the Strasbourg Agreement, the Budapest Treaty, the Paris Convention, the Patent Cooperation Treaty, the European Patent Convention, and the World Trade Organization (WTO) and Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement are the most well-known.
- In the event of a conflict between international agreements on fundamental rights and freedoms that have properly been ratified and other domestic regulation, Article 90 of the Constitution provides for the prevalence of the provisions of the international agreement.
Turkey 1 Global Patent Litigation –
- Articles 113 et seq. of the IP Code govern employee inventions and foresee compensation for inventors who are employees. No fundamental change is brought with the new IP Code, and the provisions related to inventions are essentially similar to those in the previous Decree-Law.
- If an employee makes an invention in the course of his duties for an enterprise or public administration, or an invention that is based to a large extent on the work and experience of the enterprise or public administration, or makes an invention in the course of an ongoing work relationship, this invention is acknowledged to be a service invention. In either case, the invention must have been completed in the course of the employment relationship to be categorized as a service invention.
- According to the IP Code, the inventor employee is obliged to notify the invention made to the employer in writing without any delay. Upon service of this notification to his side, the employer should notify the employee whether he claims full or partial right on the service invention, in writing within four months as of the date the employee's notification reaches him.
- If the employer claims full rights to the invention, the inventor may claim a reasonable payment from the employer. On the other hand, if the employer claims partial rights to the invention and uses it, the inventor will have the right to claim a reasonable payment from the employer. The calculation of such payment is based on how well the invention can be commercialized, the position of the inventor in the enterprise and the contribution of the enterprise to the invention.
- The Regulation on Employee Inventions, Inventions Realised within Higher Education Institutions and Inventions Arisen from Projects Supported by Public Authorities entered into force on 29 September 2017. The regulation sets out rules for calculating awards in line with the Guidelines on the compensation of employee inventions in Germany.
- It should be highlighted that the new regulation establishes rules foreseeing that any dispute that falls under the scope of the regulation must be solved via arbitration. However, it is legally impossible to introduce compulsory arbitration via regulations. Section 8 of the new regulation and many other provisions that will be affected by it are subject to cancellation actions before the Council of State on the grounds that the regulation exceeds the authority permitted by law and violates the Constitution. These actions are still pending before the Council of State.
- It is important to note that, after claiming rights on the service invention, the employer cannot free himself from paying the claimed amount by arguing that the invention is not worth protecting unless a court decides that the patent is not worth protecting. The IP Code foresees that the amount and method of the payment will be determined in accordance with the contract or other legal agreement between the employer and employee if there is any.
- In Turkey, there is no significant precedent regarding employee inventions and relevant payments; most of the disputes between the employee and employers are resolved amicably.
- Article 109 of the IP Code foresees that the person submitting the initial application for a patent has the rights in relation to the patent unless the contrary is proven. That is to say, the IP Code contemplates a 'first to file' as opposed to a 'first to invent' system. Inventors or their successors are entitled to allege derivation of the patent entitlement. The allegation that an applicant is not entitled to claim patent rights on the invention may be brought before the competent IP courts, and the Office must be notified of the action.
- If the court accepts the action filed by the third party claiming to have entitlement and accepts his entitlement on the patent, then, remedies available against the abusive patent applicant will differ depending on whether the patent is registered or pending before the Office.
- If the abusive patent application is still ongoing at the time of the Court decision, then, the court-approved right owner will have three rights of choice. He may (i) request the Office to register and process the patent application in his name, (ii) submit a new patent application for the same invention making use of the same priority right or (iii) request the Office to reject the application, by applying to the Office.
- In case the court-approved right owner wants to submit a new patent application for the same invention making use of the same priority right, this application will be processed as of the date of the initial abusive application, and the said application will be considered invalid. The court-approved right holder should apply to the Office within three months as of the finalization of the Court decision about the true right holder. A Court decision will be accepted as final if no appeal is filed in due time, or, when the Court of Appeal renders a final decision on the appeal(s) filed. If no application is made to the Office, within three months, the disputed application will then be considered as withdrawn.
- As per Article 111 of the IP Code, if the abusive patent application is finalized and the patent is registered in the name of the deriver, then the right holder can request the re-assignation of the patent to himself. In principle, the entitled person should file the action on the derived patent within two years of the publication of the patent as registered; however, this limitation does not apply for malicious patent registrations.
- According to Article 109 of the IP Code, the rights to a patent will belong to the inventor or his successor in title and will be transferable. Where an invention has been made jointly by more than one person, unless foreseen otherwise by the parties, the right to request a patent will belong to them jointly. Where an invention has been made independently by several persons at the same time, the right to a patent will belong to the person who files the first application or who can claim an earlier priority right.
- The person who is the first to apply for a patent will be vested with the right to request the patent until proof to the contrary is established. As per Article 138 of the IP Code, the filing of the patent application by a non-entitled person may result in the invalidity of the patent.
- As per Article 2 of the Labor Code No. 4857, an employee is defined as a person working based on an employment contract. According to the IP Code, employee inventions may be classified as service inventions or free inventions.
- Service inventions are inventions that are made by the employees during the term of their employment, either in a private enterprise or public authority, while performing, as of their obligation, the tasks they have been assigned to or which are based to a great extent on the experience and work or activity of the private enterprise or public authority. An employee that has made a service invention will be under the obligation to report, without delay, the invention to his employer in writing.
- An employer may claim rights, in part or in whole, to a service invention. The employer should notify the employee of such a claim in writing and must make his claim within four months from the date of receipt of the employee's report by the employer. Where the employer claims rights of ownership on the service invention, the employee will have the right to a reasonable fee. For further information, see Smart Chart 2.1: invention fee.
- Employee inventions not falling under the scope of service inventions will be deemed to be free inventions. An employee who has made a free invention during the term of an employment contract must notify the employer without delay. Where the invention falls within the field of activity of the employer's enterprise or where the employer's enterprise was in serious attempts to become active in the field of the invention, the employee will be under the obligation to make an offer to the employer, on a non-exclusive basis, to benefit from the invention on reasonable terms.
- The above-described rules regarding the employee inventions apply to the inventions made by employees of universities and public administrations having a task of research or to inventions that are the outcome of projects supported by public institutions and organizations unless they contradict with the special provisions foreseen in the Article 121 and Article 122 of the IP Code. For further information, see Smart Chart 2.5: education/ research.
- The IP Code foresees great amendments on the provisions regarding the inventions made by employees of universities as a result of their scientific work and researches of the abolished Patent Decree-Law.
- Article 41 of the abolished Patent Decree-Law, was foreseeing that the inventions made by the university employees as a result of their scientific work and research, were free inventions. That is to say, the university employees were the owner of all of the material and moral rights on the invention. However, with the new IP Code, the system which is similar to the employee invention system is adopted. See Smart Chart 2.1: compensation and Smart Chart 2.3: employee.
- According to Article 121 of the IP Code, university employees are obliged to immediately report the invention and the patent application, if any, in writing to the university. If the university claims rights on the invention, it is obliged to file a patent application for the inventions made by the university employees. Failing to file such
application will convert the employee's invention to a free invention. The income from the invention is shared among the institution of higher education and the inventor, with the inventor receiving at least one third.
- According to Article 121 of the IP Code, with respect to inventions made by members of the academic staff, by internees or students as a result of contract-based work at other public institutions or for private organizations, the rights ownership is defined on the basis of the contract provisions, with the provisions of other laws reserved.
- The provisions regarding employees, which are not university staff, also apply to the inventions of students and internees who work without pay and without a defined time limit, working in the workplace of the Employee.
- According to Article 109 of the IP Code, if the invention is the work of more than one person, each of them has rights with respect to a patent for such invention, unless otherwise agreed by the parties. If a patent application or a patent is owned by more than one person without being divided, the co-ownership is governed by the agreement between the parties, if no such agreement exists, by the provisions of Turkish Civil Code on shared ownership.
- According to Article 112 of the IP Code, every right holder is entitled to (i) freely dispose of his share, (ii) use the invention upon notification to the other co-owners, (iii) take necessary measures to protect the patent application or the patent and (iv) may initiate legal proceedings against third parties suspected to violate any rights granted with the patent application or the patent. However, in filing such an action, the plaintiff is obliged to inform the other right holders of the action within one month from the date of filing of the action.
(2.7) ENTITLEMENT CLAIMS
- In relation with disputes on ownership of the invention, Article 110 of IP Code reads:
- Allegations that an application owner has no patent claim right cannot be made to the Institute. Until the contrary is proven, the application owner is considered to have a claim to the patent right.
- Persons who, during patent application procedures, in accordance with the provision of Art. 109, paragraph 1, claim to be the true patent owners have to file a lawsuit against the application owner and notify the Office about it. The court may decide to suspend the patent granting procedures until the court's ruling has become binding.
- If the plaintiff wins the rights ownership case, the
court-approved rights holder must, within three months of the
ruling becoming binding, proceed as follows with respect to the
still valid application:
- request the Office to register and process the patent application in his/her name.
- submit a new patent application for the same invention making use of the same priority right, if applicable.
- request the Office to reject the application.
- Applications under paragraph 3b are processed as of the date of the initial application. In this case, the initial application is considered invalid.
- If the plaintiff and true rights owner fails to apply to the Office within three months of the court ruling becoming binding, the disputed application is considered withdrawn.
- Persons who claim a partial right in the patent as co-inventors have the right to take the matter to court in accordance with paragraph 2.
- The provisions of paragraph 3 also apply to divided applications in accordance with Art. 91.
- Patent applications that are taken to court in accordance with paragraph 2 cannot be withdrawn without the approval of the plaintiff before the ruling becomes binding.
- If a patent is granted while court proceedings are ongoing, the case of unlawful application appropriation becomes a case of unlawful patent appropriation.
- On the other hand, as per Article 111 of the IP Code, if a patent has been granted to a person other than the rightful owner, the person who alleges to be the legitimate proprietor of such right may file an action claiming the transfer of ownership of the patent without prejudice to his/her other rights and claims conferred by the patent. Where only partial rights to the patent are claimed, a court action may be filed claiming joint ownership of the patent.
- The right to raise such a claim and file such a court action as described above shall be exercised within two years following the date of publication of the patent or, in cases of bad faith, until the expiry of the term of protection of the patent. At the request of the interested party, the court action and the claims put forward therein, the final ruling or any other action concluding the court action shall be registered in the Patent Register in order to have effect against third parties.
- SCOPE OF PROTECTION
(3.1) CLAIMS, DESCRIPTION AND DRAWINGS
- According to Article 89 of the IP Code, the scope of protection of a patent application or patent is determined by its claims. It is important to interpret the claims in a manner so as to provide protection to the applicant or patent owner and reflect a reasonable degree of precision in terms of the scope of the protection also for third parties.
- On the other hand, description and drawings should be used in the interpretation of the claims; they disclose means for performing the invention and therefore have a different role than the claims. According to Article 92 of the IP Code, claims should be grounded on the description and should not exceed the scope of the invention defined in the description.
- The interpretation of the claims should not be limited to the meaning assigned by the words used. In the designation of the scope of protection, the claims may not be expanded to include also features which have been considered by the inventor but not requested in the claims, yet may arise in the interpretation of the description and pictures by a person skilled in the relevant art.
(3.2) PATENT AS GRANTED
- In accordance with the framework foreseen in Article 101 of the EPC, a post-grant opposition system has been introduced to the Turkish Law with Article 99 of the IP Code. The aim of this is to lead to stronger patents or patents with a fairer scope of protection and adopt a system similar to the EU.
- The patent owner starts to enjoy the rights arising from the patent application as of the date of the publication of the patent application in the Bulletin. With the new post-grant opposition system introduced, the scope of protection of the patent application is determined by the claims in the application as published, for the time until the grant of the patent. However, if any amendment is made on the claims of the granted version of the patent or any amendment is made on the claims due to objections or invalidity claims of third parties, then, the scope of protection of the patent will retrospectively change in accordance with the new claim set.
- According to Article 103 of the IP Code, patent applications may be amended by the applicant owner while procedures regarding the application at the Institute are ongoing. In order to make a valid amendment, the amendment made should not exceed the scope of the initial application.
(3.3) INTERPRETATION OF STATE OF THE ART
- According to Article 83 of the IP Code, determination of the state of the art is important to determine whether the patented invention is novel and/or meets the inventive step criterion. Indeed, an invention which is not included in the state of the art is accepted to be novel, and an invention that is not obvious to the skilled person in light of the state of the art and common general knowledge is accepted to be inventive.
- It is regulated that the state of the art is accepted to comprise information or data pertaining to the subject matter of the invention, accessible to the public in any part of the world, before the date of filing of the application for a patent by disclosure whether in writing, or orally, by use or in any other way. Other than this, the disclosures of national patent and utility model applications published on the date of the application or thereafter but dated back to before the application date are also considered as state of the art. However, pursuant to Article 83(5) of the IP Code, the content of these applications and documents which are considered to form the state of the art is not taken into account in the evaluation of the inventive step.
- Other than the above, Turkish Law does not specifically contemplate, for the purposes of determining the scope of protection, the extent to which the state of the art must be interpreted in the same way as it was or was not by the office which granted the patent. There is not any specific guidance on this point in the case law.
(3.4) CRITERION FOR SCOPE OF PROTECTION
- As elaborated above in section 3.1, the scope of protection of a patent application or a patent is determined by its claim(s) which are in turn interpreted in consideration of the description and drawings. Claims should be interpreted in a manner so as to permit, on the one hand, fair protection for the rights holder of a patent application or of a patent, while, on the other hand, providing a reasonable degree of certainty to third parties about the scope of protection.
- Claims should not be interpreted as confined to their strict literal wording. However, for determining the scope of protection of a patent application or of the patent, where those features, though contemplated by the inventor, are not expressed in the claim(s) but are only revealed upon interpretation of the description and drawings by the person skilled in the art, the claim(s) should not be deemed to include/cover those features.
- On the other hand, while determining the extent to which protection is conferred, due account must be taken of any statements made by the applicant during the patent granting procedures or by the holder of the patent during the term of validity of the patent.
- Where a patent contains examples of the embodiment of the invention or examples of the functions or results of the invention, the claims must not be interpreted as being limited to those examples. The mere fact that the product or process has features not explained in the examples in the patent document or features that do not comprise the characteristics explained in the examples or that do not achieve each and every result indicated in the examples does not bring the product or process outside the scope of protection granted by the claims.
(3.5) ROLE OF PROSECUTION HISTORY
- According to Article 89(6) of the IP Code, the declarations of the patent applicant or patent owner will be taken into account in the designation of the scope of protection during the transactions related to the grant of the patent for designating the scope of the claims or throughout the period of validity of the patent.
- However, in considering the statements and explanations made by the patent owner in the process of the examination and registry of the patent application, the provision aims to prevent the inclusion in the scope of protection of elements disowned by the patent applicant or holder that might otherwise have been considered to be within the scope of protection in accordance with the 'doctrine of equivalents.'
- According to case law of the Court of Appeal dated 8 March 2012 with merit number 2012/9682 and decision number 2013/11217 and Istanbul 2nd Civil Court of Intellectual and Industrial Property Rights' decision dated 9 July 2015 with merit number 2012/226 and decision number 2015/169 (similar to the doctrine of 'prosecution history estoppel'), the holder's position on the patent scope at the moment of assessing the validity of the patent is relevant when deciding on the existence of infringement and, in particular, when applying the doctrine of equivalents.
- In other words, prosecution history is not considered when determining the scope of protection of a patent, but, it is considered within the framework of 'doctrine of equivalents' when there is an infringement allegation grounding on the doctrine of equivalents.
- The protection granted by a patent is not limited to the products or processes that are covered by the literal meaning of the claims but extends to realizations of the claimed teaching with equivalent means.
- Article 89(5) of the IP Code foresees that the elements qualified as equivalent to the elements indicated in the claims on the date when the existence of infringement was asserted shall be taken into account in determining the scope of protection provided by the patent application or the patent. The decision of the 11th Civil Chamber of the Turkish Court of Appeals, dated 29 March 2017 and numbered 2015/14058E., 2017/1789 K. reveals the fact that the so-called element by element approach is accepted in Turkish Law.
- If an element actually has the same function as an element requested in the claims, performs that function in the same manner and provides the same result, that element is generally accepted as the equivalent of the element requested in the claims. The decision of the 11th Civil Chamber of Turkish Court of Appeals, dated 24 December 2015 and numbered 2014/18840E. 2015/13906K., and the decision dated 18 December 2017 and numbered 2016/5160E. 2017/7347K., reveals that the cumulative presence of these three conditions is essential for the acceptance of equivalency.
(3.7) NON-INVENTIVE APPLICATION OF STATE OF THE ART
- It is legally possible for a party who allegedly infringes a patent to show that he practices the prior art or a non-inventive variant of the prior art so that no infringement can be found, however, there is no explicit provision governing this defence or any reported precedent in Turkish Law.
- According to Article 90 of the IP Code, the description, claims, abstract, and pictures, where available, may be submitted in one of the official languages of the states which are party to the Paris Convention or the Treaty Establishing the WTO or apply the principle of reciprocity. However, according to Article 95 of the IP Code the Turkish translation of the patent documents should be submitted to the Office within two months as of the application date without requiring any notification, and the failure to submit the translations within this term will result in the consideration of the application as withdrawn.
- The translation of a patent document has significant importance for the determination of the scope of protection of a patent filed in Turkey through the European Patent Convention. With regards to a patent application filed in Turkey through the European Patent Convention, the legal framework has been regulated with the Regulation on the Application of the European Patent Convention in Turkey.
- According to the Regulation on the Application of the European Patent Convention in Turkey, if the conditions in Articles 12 and 13 of the Regulation are fulfilled, a European Patent will be treated as a national patent in Turkey.
- Article 12 of the Regulation states that 'the Turkish translation of European Patent certification including the description claims and the drawings should be submitted to Turkish Patent and Trademark Office within three months from publication of the acquisition of European Patent right.' According to Article 13 of the Regulation, the translation of the European Patent should be published by the Turkish Patent and Trademark Office and announced in the Official Journal of the Turkish Patent and Trademark Office. The holder of the European Patent will start to enjoy the rights arising from its patent application as of the publication of the translation of the patent document.
- Where an amendment is made on the patent document as per European Patent Convention Article 101 or the scope of protection of the patent is limited as per the European Patent Convention Article 105a, the patent holder should submit the revised Turkish translation of the patent document to the Turkish Trademark and Patent Office within three months starting as of the publication of the amendment in the European Patent Journal.
- Most importantly, if the scope of protection of a European Patent derived from the Turkish translation of the patent document is narrower than the original language of the patent document, then the Turkish translation will prevail when determining the scope of the protection of the patent.
(3.9) NATIONAL (NON-EUROPEAN) PATENTS
- Patent registrations may be obtained either through a direct application to the Turkish Patent and Trademark Office, through the Patent Cooperation Treaty, or through the European Patent Convention. If the application is filed directly with the Turkish Patent and Trademark Office, the Turkish Patent and Trademark Office examines the patent applications with regards to the required formalities within one to two months of the application date. There is no significant difference for the purposes of this chapter between European Patents and Turkish National Patents.
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