PROSECUTION OF NATIONAL APPLICATIONS IN TURKEY

PROSECUTION OF NATIONAL APPLICATIONS IN TURKEY
STAGES OF PATENT PROSECUTION

A Turkish patent application undergoes the following legal procedures:

- Application,
- Search and Examination,
- Grant,
- Post-Grant Proceedings and Annual Fees,
- 3rd Party Observations.
- Post-grant opposition as defined as of 10/01/2017 under the new Industrial Property Law 6769

PATENT PROSECUTION STAGES OUTLINE UNDER THE EXISTING SYSTEM APPLICABLE TO ALREADY FILED APPLICATIONS AS OF 10/01/2017 UNDER THE PROVISIONAL PROVISIONS OF NEW INDUSTRIAL PROPERTY LAW 6769

The life-time of a patent application has the main steps of application, search, examination and grant/refusal. Turkish patent law allows only three examinations. These are not to be viewed as three separate examination reports but offiical communiations with the examination authority. The Turkish system is an inherently effective system in terms of procedural economy urging the applicant to obtain a grant decision only with three official communications at most.

EXAMINED & UNEXAMINED PATENT APPLICATIONS

A Turkish national filing (as well as a PCT or Convention treaty application) may undergo search and examination being carried out by a non-national authority as selected by the applicant.

The applicant may also opt for an unexamined patent provided that the search stage is already terminated. There are a number of competent Searching Authorities the national office has a mutual agreement in this effect, any such office having a respective official fees. The applicant is free to file the specification with any number of claims. No claim fee is applicable for the time being. The unexamined patent system is abolished as of 10/01/2017.

The applicant can obtain an earlier date of filing by submitting the specification in a language other than Turkish provided that he files the translation in one month or in a duration of an additional three months. The original language of the specification shall be in one of the official languages of the EPO. It is further to be noted that each competent Searching Authority has an allowable specification language.

EXAMINATION STAGE IN THE TURKISH GRANT PROCEDURE

Examination stage in the Turkish grant procedure should be regarded as a series of subsequent examination division communications such that only as many as three examination requests can be filed, each being subject to an official fee. However, any of these is merely a further official communication with the authority. The advantage lies in that the applicant is free to change the authority whereby an office of preference can be determined for any of the three requests. It is to be noted that proceeding with the same authority starting from the search stage provides financial advantages.

RENEWAL FEES IN TURKEY

Renewal fees are typically applicable from the second and for each subsequent year from the filing date of the application irrespective of the pending or granted status. 

Instead of a provision stipulating that payment of the fee can be effected until the last day of the month containing the anniversary of the date of filing (Rule 51(1) EPC), the legislation provides that a renewal fee is due on the same day of the month containing the anniversary of the date of filing. Annual fees are therefore due to the date of anniversary of the application, starting with the annual fee for the second year. The annual fees are still payable within the following 6 months subject to a surcharge.

SURCHARGE PERIOD FOR RENEWAL FEES

The surcharge period is six months. In case the time limit for the additional six months period is not observed, a petition for reestablishment of rights is needed to be filed. However, the applicant should file any facts, evidence and arguments to demonstrate ALL DUE CARE.

THIRD PARTY OBSERVATIONS IN VIEW OF THE SEARCH REPORT

Third party objections may be filed in view of the the Search Report regarding the patentability of the application within 6 months of the publication of the Search Report.

POST-GRANT INVALIDATION

A granted patent may be invalidated before the courts. An opposition procedure before the local authorty is possible as of 10/01/2017 after the grant of the patent.

UNEXAMINED PATENT CONVERTED INTO AN EXAMINED PATENT APPLICATION AND ONGOING COURT PROCEEDINGS

An applicant can request grant of an unexamined patent (to be in force for seven years), even if the search report 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 no court can take an infringement decision until the examination procedure is terminated. An infringement action by the proprietor of a patent granted without examination is generally countered by an examination request by the assumed infringer. A request for examination of an unexamined patent can be filed in the absence of an infringement action against the requester It is possible to file third-party observations free of charge analogous to EPC Art. 115 submissions. The unexamined patent system is abolished as of 10/01/2017.

PRACTICE OF BOARD OF REEXAMINATION

The decisions of the Turkish PTO departments can be appealed. The ongoing examination practice of the Appeal Board (or BOARD OF REEXAMINATION), is only restricted to examination of formal matters and procedural violation of law by the patent granting authority. Therefore substantive law issues are typically not considered by the Board of Re-examination, whose decisions are final and are to be appealed before competent courts.

EX-PARTE THIRD-PARRY OBSERVATION PROCEEDINGS REVISITED

The legislation allows for pre-grant third party observations. The course of action to invalidate a grant decision is to file a lawsuit before a competent court. However, an opposition procedure before the local authorty is possible as of 10/01/2017 after the grant of the patent. Similar to the third-party observations before the EPO under Article 115 EPC, the observations are included in the application file with no binding effect during ex-parte proceedings. They are only allowable during a six-month time period from the publication of the Search Report. They are to be filed in the language as allowed by the Examination authority. If the applicant opts for an unexamined patent, the third party observation file will be added to the patent file to be considered by an examination authority only if any third party or the proprietor himself files a request for conversion into an examined patent.