Litigation

Litigation
PATENT AND UTILITY MODEL NULLITY CASES

Legal bases for patent and utility model nullity cases are defined under Art. 129 and 165 in the Decree Law #551 pertaining to the protection of patent rights in Turkey.

PARTIAL REVOCATION

Art. 129 DL #551 includes a passage in identical context with the provision of Art. 101(3)(a) EPC, stipulating that a patent can be invalidated in part.

INVALIDITY ACTION AGAINST A TURKISH PATENT

Referring to Art. 130 DL #551, a court action must be initiated to request invalidity of a Turkish patent. Such an action can be instituted up to within 5 years after termination of the patent right. Art. 131 DL #551 defines ex nunc effect of a revocation decision (as given in Art. 68 EPC).

UTILITY MODEL NULLITY/ SELF-DECLARATORY NATURE OF THE UTILITY MODELS SYSTEM

The Turkish utility model system has a self-declaratory nature in the sense that no search and examination is conducted. The turbulent nature of the system e is acknowledged by lawmakers in Art. 162 DL #551, explicitly specifying that usefulness of the content of a Utility Model document is not under official guarantee.

UTILITY MODEL THIRD-PARTY OBSERVATION PROCEDURE

The third party observation system for utility models under DL #551 in Turkey is a hybrid application of Art. 99 and Art. 115 EPC in the absence of an examination or opposition authority. It has similarities to third party observations filed under Art. 115 EPC as it is a pre-grant procedure. A third party can base his observations on conventional grounds similar to those under Art. 100 EPC, with the exception of inventive step requirement, which is not a substantive law requirement for obtaining a utility model grant (Art. 154 DL #551).

CHEMICAL COMPOUNDS OR METHODS

Utility model filings cannot cover, in the sense of the subject-matter being claimed, chemical compounds or methods of any sort (Art. 155 DL #551). Standard cases outside the definition of an invention as given in Art. 6 DL #551 (similar to Art. 52(2) EPC) are also to be noted.

Legal bases for invalidating a utility model right in Turkey are given under Art. 165 DL #551. Referring to Art. 165 DL #551, it is similar to Art. 100 EPC providing a list of legal situations where revocation of a European patent can be requested.

DISPUTES IN COURT PROCEEDINGS OTHER THAN SUBSTANTIAL PATENT LAW DISPUTES

Disputes in court proceedings other than patent law disputes entail entitlement to court proceedings, late submission of facts, evidence and arguments, unsubstantiated grounds, organic relation between a concerned party and another party of parallel court proceedings being already terminated, experimental use exemption to patent infringement and continuing insolvency proceedings with simultaneous patent law disputes. These secondary issues can unexpectedly influence the course of the legal procedure in many cases. Our patent attorneys act as members of court panels as appointed by specialized IP courts of Istanbul. The court having competence in a specific invalidity case is determined according to the place of business of the proprietor if any or to the place of business of the professional representative (Art. 137, DL # 551).

GROUNDS FOR NULLITY CASES

Typical grounds for nullity cases specified in Art. 129 DL #551 are identical to the ones defined by Art. 100 EPC and additionally the cases where Art. 52(2) EPC, 53(a) or 53(b) are applicable. The legal implications under Art. 100(b) and 100(c) are relevant according to the DL #551. However, certain legal gaps covered by the Case Law within the European patent law framework do not have clear implementations in Turkey. As a quick example among many others to demonstrate the situation, it is not legally clear whether the content of the priority document forms part of the documents on which an applicant can rely when making amendments to his national application claiming priority of an earlier application.

NULLITY AND INFRINGEMENT CASES COMBINED

In response to an infringement action, the alleged infringer may initiate a nullity action and the court where the second action was filed may decide to hear the cases together.

DECLARATORY JUDGMENT

Proprietors have the right to initiate court actions against alleged infringers. However, alleged infringers can also proactively institute declaratory judgment actions for non-infringement. A party may also file a declaration of non-infringement along with a request to revoke the patent in question.

DECREE LAW #551 IN PARALLEL WITH THE EUROPEAN PATENT CONVENTION IN TERMS OF REVOCATION

Referring to Art. 129 DL #551, it is similar to Art. 100 EPC providing a list of legal situations where revocation of a European patent can be requested. These opposition grounds cover patentability under Art. 52-57 EPC, enablement under Art. 83 EPC and subject-matter extending beyond the content of the application as filed (analogous in the cases of a divisional application or an Art. 61 application) under Art. 123(2) EPC. Similarly, Art. 129 DL #551, citing the same grounds as legal bases for nullity, it adds a fourth ground in which case the right to obtain a patent (entitlement) is in dispute. Art. 129 DL #551 is different from Art. 61 EPC in that it stipulates that a court action can be initiated only by the inventor of the patent, entitlement of which is under dispute, while Art. 61 EPC is silent about this.

EUROPEAN OPPOSITION OR APPEAL PROCEDURE IN PARALLEL WITH NATIONAL COURT ACTIONS

STAY OF NATIONAL COURT PROCEEDINGS

The proceedings before the EPO may have a positive or negative impact on the court proceedings in Turkey depending on the arguments of the parties. The legal outcome of the EPO proceedings is legally binding only if a national validation of the same European patent in Turkey is concerned. Otherwise, general patentability criteria and relevance of prior art documents considered before the EPO can be subject to dispute in national court proceedings.

It can be noted that judges usually consider the estimated time amount of the EPO procedure before it is finalized. It is likely that the EPO opposition procedure causes stay of national court procedure. As European appeal procedure takes substantially longer period, the court is more likely to decide itself on the merits of the case. In terms of the relevancy of certain documents, a court panel is appointed, whose interpretation of the case will be influential. The judges are only legally qualified. The final judgment of a court is mostly in line with the report of the panel of experts in revocation and infringement proceedings. The panels are generally composed of technically and legally qualified members. New panels can be established until at least one additional report supports a given party’s legal position.

NON-PREJUDICIAL DISCLOSURES

A grace period of twelve months is applicable provided that the applicant himself directly discloses part of the technical content of the invention within a period of 12 months prior to the filing or priority date (if any). The general principle also extends to disclosures by third parties as in the case of an EPC Art 61 situation (Entitlement disputes).

EARLIER FILED & ON OR LATER PUBLISHED APPLICATIONS

DL #551, Art. 7 prescribes that applications with an earlier effective date but published on or later that date (analogous to the situation specified in Art. 54(3) EPC) form part of the state of the art in terms of novelty assessment.

APPLICATIONS WITH SECOND MEDICAL USE CLAIMS

An exclusion of the absolute novelty requirement as specified by EPC2000 also applies to European patents validated in Turkey under the EPC as DL #551 Art. 4 prescribes that international agreements take precedence over national law (except the European validations granted before 13.12.2007). It is therefore to be noted that, in contrary to EPC validations, PCT national phase entries are to be regarded as regular national applications to be examined under the DL #551.

NON-EXAMINED PATENT APPLICATIONS & UNEXAMİNED PATENTS

An applicant can request grant of an unexamined patent to be in force for seven years even if the search report drawn up is not favorable. However, any third party can request examination of the unexamined patent by paying the prescribed examination fee during the lifetime of the granted document. An unexamined patent returns to pre-grant stage so that courts can take no decision in an infringement case based on the unexamined patent during the course of the examination procedure. An infringement action by the proprietor of a patent granted without examination is countered by an examination request of the assumed infringer.

Requesting examination for an unexamined patent as a proactive measure can be the case even when no infringement action is filed against the requester. It is possible to file third-party observations analogous to EPC Art. 115 submissions where no official fees are payable.

POST-GRANT AMENDMENTS & SIMULTANEOUS NULLITY ACTIONS

As post-grant amendments are not a legal instrument to overcome substantive law objections raised during nullity actions because the patent owner is not allowed to defend his property right by way of limiting its invention. The remaining choice is renouncing one or more claims so that the document would remain valid for the rest of the claims (DL #551, Art. 135). The claim sets of Euroepean patent can be conventionally amended and limited under the EPC. Therefore, the European opposition, appeal and limitation proceedings have a prominent role over the course of court proceedings in Turkey.

MAINTENANCE AS AMENDED

DL #551, Art. 129 prescribes that the court can order partial revocation of a granted document in respect of certain claims.

THE SUPREME COURT OF APPEAL

The Supreme Court of Appeal in the capital is the court of last resort in all IP matters. The Judges have legal backgrounds so that only any substantive procedural violation of the first instance court is examined rather than the technical merits of the case and the decision of the first instance can be set aside while the case is remitted with a substantiated decision.