What is the difference between Patent and Utility model?
Patent, entitles the owner of the invention the rights of producing, using, selling or exporting the product subject to invention for a certain period of time. The certificate presenting this right is called Patent Registration Certificate. In the Utility Model, criteria of exceeding the current situation of the technique is not required, protection periods are different. Processes and products obtained by said processes as well as chemical products cannot be subject of utility model protection according to the Turkish IP Law No.6769.
What are non-patentable subject matters and inventions according to Turkish patent law?
• Discoveries, scientific theories, mathematical methods,
• Plans, methods, schemes/rules for performing mental acts, for conducting business/trading activity, and for playing games.
• Literary and artistic works, scientific works, creations having an esthetic characteristic, computer programs.
• Methods involving no technical aspect, for collecting, arranging, offering/presenting and transmitting information/data.
• Methods of diagnosis, therapy and surgery applying to human or animal body.
• Plant and animal varieties/species or processes for breeding/plant or animal varieties/species, based mainly on biological grounds.
Has Turkey signed up to the London Agreement? If not, how likely is it to do so?
Turkey has not yet signed up to the London Agreement and there is no appointed schedule for negotiations to ratify the agreement. Therefore, the obligation to file the complete Turkish translation of the patents in Turkey remains.
Is it possible to obtain extension for validation of a European patent in Turkey?
It is not possible to extend the validation term of a European Patent in Turkey, however it is possible to obtain extension of 3 months for submission of the Turkish translation of the European patent to the Turkish Patent and Trademark Office by paying a surcharge in case the request for the extension for a validation of a European Patent in Turkey is made within the validation term.
Is there any late filing for Turkish national phase entry of the international applications in Turkey under PCT?
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.
When and how should the decision between patent systems with or without substantive examination made for PCT national phase applications in Turkey?
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.
Is it possible to convert “a Turkish patent without substantive examination” to “a patent with substantive examination?
Yes, a “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 paid by the party namely the patentee or third persons having filed the said request for (substantive) examination.
As a note, with the New Turkish IP Law No.6769 which has entered into force as of 10th of January 2017, there is no longer system such as patent without substantive examination. Therefore, conversions are applied to the patents/patent applications which were filed before New IP Law No.6769 and therefore, which are subject to the former Decree Law No.551 pertaining to the protection of patents / utility models.
What are the most effective ways for the patent holders in Turkey to enforce their rights in the jurisdiction?
There are several options to enforce their rights, the most common of which are:
• Sending a cease and desist letter (preferably via a Turkish notary, although this is not mandatory).
• Initiating civil and/or criminal proceedings before the courts.
• Requesting an interlocutory injunction before or together with civil court proceedings.
• Obtaining border seizure at Customs and then initiating proceedings.
A preliminary injunction to stop the infringement and/or to seize the infringing products can be claimed before or alongside the civil proceedings. However, such an injunction is rarely granted, unless very strong evidence of infringement is available.
For criminal proceedings, a rights holder must file a complaint against the infringer with the public prosecutor. Although criminal actions were previously a commonly used and effective tool in patent enforcement, this course of action is no longer advisable due to legislative gaps and of which are expected to be resolved soon a major backlog at the criminal courts, both of which are expected to be resolved soon.
What level of expertise can a patent owner expect from the courts in Turkey?
The judges at the specialised IP courts are trained in IP disputes. Although they hear cases on all aspects of patent infringement and thus are experienced in patent judgments, in principle they have no technical expertise.
The court usually appoints a panel of independent legal experts to examine all legal and technical facts, which are considered at first instance only.
What are the typical remedies granted to a successful plaintiff by the Turkish courts?
The Turkish IP Law No.6769 provides for several remedies, such as damages, injunctions and the recall and destruction of infringing goods. If infringement is proven, the court will usually grant damages and an injunction against the infringer.