NATIONAL NULLITY CASES

NATIONAL NULLITY CASES
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 MODEL 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 applications are subject to prior art search as of 10/01/2017 under the new Industrial Property Law 6769 subject to provisional provisions.

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).

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 AND BIFURCATIONS

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.

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 an exhaustive 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.

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.

However, it is possible to file a notice of opposition in post-grant proceedings as of 10/01/2017 under the new Industrial Property Law 6769, subject to provisional provisions thereof.

MAINTENANCE AS AMENDED

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