Industrial Property & Intellectual Rights

Patent

A patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent. A patent is a form of 'industrial property', which can be assigned, transferred, licensed or used by the owner.



We work with patent attorneys who have a wide range of experience in Turkish Patent Legislation and who can guide you in technical areas.

OUR SERVICES

  • General advice on patent filing strategies
  • Preparation of patent specifications
  • Filing all necessary papers at Turkish Patent Institute (TPI)
  • Handling oppositions raised by third parties
  • Handling objections raised by TPI
  • Advice and assistance in relation to infringements and attacks on validity
  • Advice on licensing and assignment of patents
  • Advice on ownership of patents
  • Litigation
  • Attending oral proceedings before EPO
  • Investigating the patentability of inventions and any risk of infringing third party patent rights
  • Name Searches for patents/applications by a particular applicant/inventor
  • Novelty Searches to assess patentability of an invention
  • Infringement Clearance Searches to assess the risks of marketing a new product
  • Weekly/Monthly/Yearly Watches by name and/or subject classification
  • Searching drug patents and preparing evaluation reports
  • Preparing technical opinion, infringement report, validity and invalidity report, and FTO report
  • Searching a subject on national and international databases
  • Searching legal status of a document
  • Searching equivalent patents/utility models
  • Preparing opinion on patentability
  • Monitoring and paying maintenance fees
  • Certified translation by expert translators
  • Training on all IPRs.

IN EUROPE

Our patent attorneys have comprehensive knowledge of European Patent Convention (EPC) and they can advise you on European patent protection. They can proceed with all the procedures in the European Patent Office, attend Hearings, file Appeals, and prepare and file Oppositions.

WORLDWIDE

Patent Cooperation Treaty (PCT) allows a kind of protection in 176 countries worldwide. Although PCT does not issue a document, it ensures worldwide announcement. We have broad experience in filing international applications through PCT.

We work with local attorneys in countries not covered by PCT or EPC and they advice us about the patent procedures in their countries.

IMPORTANCE OF PATENT PROTECTION

A patent owner protects his/her patented invention from being exploited such as being produced, used or sold without his/her knowledge. Thanks to this exclusive right, the patent owner compensates the development costs of the invention.

Patent protection is ensured by a comprehensive research. For supplying a risk capital, patent protection is necessary. It also contributes to the economic growth. While filing application for obtaining a patent, a company had better have a strategy for minimizing costs.

Thanks to the patents, the individuals and companies compensate the development costs of the invention and earn money from the invention. An intelligent strategy should be followed for protecting the business interests while choosing the implementation places, time and ways of the patented technology. By considering rules and laws in certain countries, it is possible to save an important amount of money while obtaining and improving rights by using patents.

Patents vest patent holders rights such as filing infringement lawsuit and seeking precautionary injunction and damages.

Furthermore, a granted patent can be sold as a whole or can be licensed to the other people to be used within the protection scope. If a company determine the license terms properly, it would be very profitable. Another important point is that if a company has granted patents or other intellectual property like trademarks, these increase value of the company or attract investors.

Having a “patented product” or “patent pending product” adds credibility of the product in the minds of consumers and thus increases sales. It is an important reference if you desire to sell your invention to large firms because said firms may not take you seriously otherwise.

PATENTS IN TURKEY

Membership of International Agreeements

TREATY SIGNATURE INSTRUMENT ENTRY INTO FORCE
PARIS CONVENTION
Washington Act (1911)   Accession: August 6, 1925 October 10, 1925
The Hague Act (1934)   Accession: July 9, 1930 August 21, 1930
London Act April 24, 1959    
Stockholm Act (1967) Articles 1 - 12   Accession: October 28, 1994 February 1, 1995
Stockholm Act (1967) Articles 13 - 30   Accession: February 12, 1976 May 16, 1976
Patent Cooperation Treaty   Accession: October 1, 1995 January 1, 1996
Budapest Treaty   Accession: August 31, 1998 November 30, 1998
Strasbourg Agreement (IPC)   Accession: October 1, 1995 October 1, 1996
World Trade Organization (WTO)     March 26, 1995
TRIPs Agreement    

January 1, 1995*

European Patent Convention     November 1, 2000
Patent Law Treaty (PLT) June 2, 2000 - -

* Turkey has availed itself to Articles 65 and 70/8 of the GATT/TRIPS Agreement in that under Transitional Article 4 of the Decree-Law No. 551, patent protection in respect of inventions pertaining to pharmaceutical and veterinary products per se and their process of manufacturing has effect as from January 1, 1999. However, Turkey has started accepting since January 1995 the filing of such black-box applications which were prosecuted along similar procedural phases applying to other applications for patent filed in this country. The only difference being that all such black-box applications having reached the stage of grant were upheld until January 1, 1999, the date after which the Letter’s Patent were issued in Turkey.

NAME ENTRY INTO FORCE
Decree-Law No: 551 Pertaining to the Protection of Patent Rights June 27, 1995  
Decree-Law No: 566 in force as from Amending Decree-Law  No: 551 Decree Law 551 was amended to include pharmaceutical inventions as from January 1, 1999 September 22, 1995
Law No: 4128 November 7, 1995  
Law No: 5194 June 25, 2004
By-law implementing the Decree-Law November 5, 1995 (as amended on December 6, 1998)  
By-law Implementing the European Patent Convention   January 9, 2001  
Law No. 5000 Establishment of Turkish Patent Institute (TPI)   November 6, 2003  

Decision of constitutional Court regarding the penalties

2009

PATENTABLE INVENTIONS

Inventions, which are novel, surpass the State-of-the-Art and applicable in industry, shall be protected by patents.

Non-Patenttable Subject Matter and Inventions

  • 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 of collecting, arranging, presenting and transmitting information that have no technical features;
  • methods of diagnosis, therapy and surgery applicable to the human or animal body. The provisions in subparagraph (e) of the first paragraph of this Article shall not apply either to the actual products and compositions used in connection with the said methods or to the manufacturing process thereof.

Patents shall not be granted for inventions relating to the following:

  • subject matter contrary to public policy or generally accepted standards of morality;
  • plant and animal varieties or processes for breeding plant or animal varieties that are based mainly on biological factors.

PROTECTION TYPES

There are three types of patents in Turkey:
  • Non-examined patent: 7-year protection from the filing date of the application.
  • Examined patent: 20-year protection from the filing date of the application.
  • A utility model: 10-year protection from the filing date of the application.

A patent can be converted into a utility model and vice versa.

PATENT PROCESS OVERVIEW

  • Prior art search and drafting
  • Filing of patent application
  • Formal examination
  • Request for Search
  • Publication of the application
  • Request for Examination
  • Compliance with the examiners office action
  • Acceptance (Notice of Allowance) or rejection.
  • Payment of the Issue Fees.

PERSONS ENTITLED TO PROTECTION

The protection conferred by the Turkish Patent Legislation shall be available to natural and legal persons who are domiciled or have industrial or commercial establishments within the territory of the Republic of Turkey, or to persons entitled to file applications under the provisions of the Paris Convention.

THE LANGUAGES IN WHICH THE TURKISH PATENT APPLICATION CAN BE FILED

The description and claims may be filed in English, French or German at the same time as the application. A term of one month shall be allowed for their translation into Turkish and the filing of the Turkish translation with the Institute or an authority designated by it, without it being necessary to give the applicant any further notice to that end. The fee specified in the Regulations shall be paid for the filing of the Turkish translation.

FILING REQUIREMENTS

NATIONAL PATENTS

The information and documents required for filing a national patent application in Turkey are as follows:

  • Name, Address and Nationality of the Applicant (s)
  • If priority shall be claimed, country, filing date and number of the application which will be claimed as the priority
  • Name, Address and Nationality of the Inventor (s)
  • In case the applicant is not the inventor, information as to how the applicant obtained the right to apply for a patent from the inventor(s)
  • Specification, claims, abstract and drawings, if any
  • If priority shall be claimed, certified copy of the priority application

RIGHT TO A PATENT

The right to a patent shall belong to the inventor or to his successor in title and shall be transferable.

Where an invention has been made jointly by two or more persons, the right to apply for a patent shall belong to them jointly unless they have agreed otherwise.

Where an invention has been made independently by two or more persons at the same time, the right to a patent shall belong to the person who files the first application or who can claim an earlier priority right than the others.

The person who is the first to apply for a patent shall be invested with the right to apply for the patent until the contrary is proved.

DISCLOSURES NOT AFFECTING PATENTABILITY

Disclosure in the following circumstances of information that otherwise would affect the patentability of the invention claimed in an application shall not affect the patentability of that invention where the information was disclosed during the 12 months preceding the filing date or, where priority is claimed, the priority date of the application:

  • by the inventor,
  • by an office when the information was contained in another application filed
  • by the inventor and which application should not have been disclosed by the office, or
  • in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor, or
  • by a third party which obtained the information directly or indirectly from the inventor.

For the purposes of the first paragraph of this Article, any person who, on the filing date of the application, had the right to the patent shall be deemed the inventor. The effects of the first paragraph of this Article shall not be limited in time and may be invoked at any time.

Where the applicability of the first paragraph of this Article is contested, the party claiming the application of the said paragraph shall have the burden of proving that the conditions of the paragraph are fulfilled or are expected to be fulfilled.

PRIORITY RIGHT

Natural or legal persons who are nationals of any State party to the Paris Convention or, if not nationals, who are domiciled or have an active business in such a State shall enjoy a right of priority of 12 months from the filing date of an application for the grant of a patent or utility model certificate with the authorized bodies of that State for the filing of an application for a patent or utility model certificate in Turkey. Priority rights not exercised within the 12-month time limit prescribed in the first paragraph of this Article shall be considered void.

SEARCH REQUEST

Within 15 months from the filing date of the application, the applicant shall file a request with the Institute for the conduct of a search of the state of the art and shall pay the appropriate fee.

Where priority is claimed, the said period shall be calculated from the date of priority.

Where the period prescribed in the first paragraph of this Article has already expired when the notification under the sixth paragraph of Article 54 is made, the applicant shall file the request for the conduct of the state-of-the-art search within the month following such notification.

Where the applicant does not file the request for the conduct of the state-of-the-art search as provided in this Article, the application shall be deemed withdrawn.

The conduct of the state-of-the-art search in respect of an application for a patent of addition may only be requested when the request is filed together with the application for the main patent, or when a search has already been conducted or requested in relation to previous applications for patents of addition. These deadlines cannot be extended in Turkey.

Turkish Patent Institute can conduct a State-of-the-Art Search inland only for some IPC codes. As for IPC codes, for which a Standard Search is not possible, the subject Search Report is to be established by one of the search authorities conducting search on behalf of the Turkish Patent Institute under special protocols.

The applicant is to select his/her preferred search authority together with the respective fees. In order to accelerate the prosecution of the application, the fee for the Search Report have to be paid to the TPI with the handling fee of the Turkish Patent Institute and the filing of the request for Search. However, the fee for the Search Report can be paid within three months after the filing of the request for conducting the Search.

The Institute shall conduct the state-of-the-art search after having examined the application in accordance with the provisions of Article 54, and on receipt of the request, filed by the applicant under Article 56, for the conduct of the state-of-the-art search.

The search report shall include the elements of the state of the art to be considered in the assessment of the novelty and inventive step characteristics of the invention forming the subject matter of the application.

The search report shall be drawn up, in the light of the specification, the drawings if any and the claims by the Institute or by the search authority designated by the Institute from among internationally recognized search authorities.

The search report shall be notified to the applicant after it has been drawn up. The copies of the reference patents and publications cited in the search report shall be sent to the applicant together with the report.

Following its notification to the applicant, the search report shall be published by the Institute after the three-month period accorded to the applicant under Article 59 has elapsed.

Of the systems for the grant of patents with or without substantive examination, the one that the applicant has chosen shall be published in the Bulletin in which the state-of-the-art search report is published.

If, when the search report is drawn up, the patent application has not yet been published, the search report shall be published together with the patent application.

Also, Transitional Article 4, paragraph 2 of the Implementing Regulation which was amended on December 6, 1998, provides that "the (Standard) Search Reports established by the Search Authorities designated under the Patent Cooperation Treaty or Search Authorities conducting the search on behalf of the Turkish Patent Institute under special protocols on the corresponding patent application(s), the priority of which has/have been claimed in the application filed in Turkey, will be accepted by Turkish Patent Institute for the prosecution of the Turkish application."

A search report established by the European, Russian, Chinese, Australian, Austrian, U.S., Spanish, Japanese, Swedish, Canadian, Finnish, Nordic or Korean Patent Offices for a present patent application is accepted in Turkey under their capacity as International Search Authorities. Besides, the Danish Patent Office is also accepted under its capacity as a search authority under special protocols.

PUBLICATION

The application is published after the elapsing of a period of 18 months from the date of filing of the application in Turkey or from the date of priority, if any, claimed in the application. The application is published in the official Turkish Patent Bulletin following the completion of the formal examination and subsequent to the filing of the request for the State-of-the-Art Search. If not published earlier, the application is published together with the State-of-the-Art Search Report.  

CHOOSING PATENT SYSTEM

The applicant shall declare to the Institute that he has opted for the system of patent grant with substantive examination or without substantive examination within three months following the notification to him of the search report. Where no such declaration is made by the said time limit, the system of patent grant without substantive examination shall be deemed to have been chosen.

The State shall not guarantee the validity and usefulness of the subject matter of a patent that has been granted without substantive examination. Later substantive examination of a patent granted without substantive examination shall require the filing of a request to that effect. Such a request shall be filed by the patentee or by third parties within not more than seven years from the filing date of the application. The substantive examination fee shall be paid by the party who filed the request for the examination.

Where the request for substantive examination is not filed within seven years from the date of filing, the right to a patent shall lapse. No request for substantive examination may be filed after the seven-year period has expired.

OPPOSITION

Within three months following the publication of the application, any person or entity having an interest therein may oppose the application for the grant of a utility model certificate, stating the reasons therefor. Within six months following the publication of the Search Report, the third parties may oppose the patentability of the patent application.

The grounds for opposition shall be that the requirements for the grant of a utility model certificate are allegedly not fulfilled, and in particular that the subject matter lacks novelty in terms of Article 156 or that the description is inadequate, not being sufficiently explicit and comprehensive to permit the implementation of the invention.

On the expiry of the opposition period, the Institute shall notify the applicant of the oppositions filed. The applicant may, within three months of being notified of the oppositions filed, submit a duly reasoned response to the said oppositions, or amend the claims if he sees fit or request the Institute to issue the certificate without taking the oppositions filed into consideration.

After the response period of the applicant expires, TPI commences the substantive examination. However, the applicant does not have to file a response to the opposition(s).

OBJECTIONS BASED ON FORMAL DEFICIENCIES

With the exception of the provisions of Article 45 of the Decree Law No. 551 on unity of invention, third parties shall be entitled to raise objections to the grant of a patent on grounds of deficiencies of form in the procedural requirements under Articles 42 to 63. Third parties wishing to raise such objections need not previously have filed observations on the state-of-the-art search report or raised objections under the system of patent grant with substantive examination.

Lack of novelty or inventive step of a patent granted without substantive examination may not be the subject of such objections.

However, according to the General Administrative Procedural Law, a deadline of 60 days should be applicable for objecting before TPI against an administrative decision on the above grounds as the Turkish patent Decree-Law No. 551 contains no provision on the time period within which objections on such grounds are to be raised. There is no need to have opposed or filed objections against application during the opposition/observation proceedings for objecting before the Turkish Patent Institute against formal deficiencies according to Articles 70 and 71 of the Decree Law No. 551.

PATENT GRANT WITHOUT SUBSTANTIVE EXAMINATION

On expiry of the period during which third parties may submit their observations on the search report, the Institute shall communicate to the applicant such written observations on the search report as it has received, together with the substantiating documents submitted by third parties.

The applicant may, within three months of the date of communication to him of the observations made by third parties under the second paragraph of this Article, make such observations on the search report as he deems relevant in response to the observations of third parties, and may, if he deems it necessary, amend the claims.

The Institute may, on expiry of the period within which the applicant may submit his observations on the state-of-the-art search report drawn up under Article 57, decide to grant the patent without substantive examination and without taking into consideration the state-of-the-art search report or any third-party observations thereon.

On payment of the prescribed fees according to the decision reached, the Institute shall issue the patent for a term of seven years and shall publish the issue thereof in the relevant Bulletin.

CONVERTION OF A TURKISH PATENT WITHOUT SUBSTANTIVE EXAMINATION TO A PATENT WITH SUBSTANTIVE EXAMINATION?

Within not more than seven years from the filing date of the application, a patent without substantive examination may be converted into a patent with substantive examination in the event that a request for examination is filed by the patentee or by third persons. The examination fee is to be paid by the party having filed the request for substantive examination.

A PATENT WITH SUBSTANTIVE EXAMINATION

Within six months following the publication of the state-of-the-art search report, the applicant wishing to obtain a patent with substantive examination shall request the Institute to conduct the examination to determine whether the subject matter of the invention is comprehensively described and whether the invention is novel and involves an inventive step. The conduct of the examination shall be subject to prior expiry of the period of six months for third-party objections and payment of the examination fee. The Examination Fee is to be paid by the applicant within a period of 6 months following the publication of the State-of-the-Art Search Report in the Official Turkish Patent Bulletin.

Since the Turkish Patent Institute does not provide examination unit in all technical fields, authorized examination offices in different countries conduct searches on behalf of the TPI under special working protocols.

Substantive Examination fees vary according to the selected examination office, and handling fee of the TPI should be paid together with the examination fee within six months.

TPI sends notification to the applicant about the results of the first examination. If the application has deficiencies, the applicant is to file a response within 6 months together with a request for second examination. In the event that the second examination report involves deficiencies, TPI notifies the applicant that a further response can be filed within three months in which a third and final examination should be requested. By considering third and final examination, the TPI reaches final decision. The second or third examination fees are to be paid while filing the request.

Patent Office

Language

IPC classes

Search Fees

1st Examination Fees

2nd, 3rd Examination Fees

Search fee

Handling fee to TPI

Examination fee

Handling fee to TPI

Examination fee

Handling fee to TPI

Turkey

Turkish

Some classes 1

TRY 300,00

-

TRY 200,00 2

-

TRY 100,00

-

TRY 300,00

Russia

English

All classes

354,00 $

TRY 50,00

236,00 $ 2

TRY 50,00

59,00 $ 3

TRY 50,00

354,00 $

236,00 $

Denmark

English
German

B, C, D,
E, G, H

1.298,00 €

TRY 50,00

885,00 €

TRY 50,00

295,00 € 3

TRY 50,00

885,00 €

A, F

1.062,00 €

708,00 €

295,00 € 3

708,00 €

Sweden

English
German

All classes

  1.180,00 €
(standard)

TRY 50,00

944,00 €
(standard)

TRY 50,00

 472,00 € 3 (standard)

TRY 50,00

 826,00 €  (standard)

  1.416,00 €
(express)

1.180,00 €
(express)

 708,00 € 3 (express)

1.062,00 €  (express)

Austria

English
German

All classes

990,00 €
(standard)

TRY 50,00

500,00 € 2
(standard)

TRY 50,00

 300,00 € (standard)

TRY 50,00

650,00 €
(standard)

370,00 € (express)

620,00 € 2
(express)

1.120,00 €
(express)

770,00 €  
(express)

172,00 € 4

 343,00 € 4

Europe

English
German
French

All classes

2.528,00 € 5
(with written opinion)

TRY 50,00

-

-

-

-

      • TPI can perform search and examination only for certain patent applications. The applicant is sent a notification advising whether the search or examination procedure can be performed at TPI.
      • If the previous search has been performed by the same office.
      • If the previous examination has been performed by the same office.
      • If the search report has been issued by Austrian Patent Office before 1 March 2005.
      • European Patent Office changes its search fee in certain periods. Therefore, the fee given in the table may differ from the fee that must be paid as of the date of issuance of search report.

You could find the available second/third examination authorities and their updated fees from the website of the TPI.

OBLIGATION TO WORK

The patentee or the person authorized by him is obliged to work the patented invention. The obligation to work shall be discharged within three years from the date of publication in the relevant Bulletin of the announcement relating to the grant of the patent. Market conditions shall be taken into consideration when working is assessed.

EVIDENCE OF USE

The patentee or the person authorized by him shall prove the working of the invention by an official certificate to be filed with the Institute. The official certificate attesting the working of the patent shall be drawn up according to the general criteria and rules laid down in the Regulations by the authority designated therein.

If the said invention is in use; then we need to submit proof of working to TPI. Please be noted that the evidence to be submitted as proof of working must be issued and certified by the relevant professional organizations, chambers of trade or industry or other related institutions. In case of imports, the import certificate shall also constitute as the certificate of use.

If the patent is not being worked; a) offer for license should be made through the Turkish Patent Institute who will publish the offer in the official bulletin and act as a mediator in case a third party would be interested in obtaining a license. OR b) if it is not possible to put the invention in use due to valid excuses such as market conditions, technical or economic or legal reasons of objective nature such as licensing, compliance with standards, new implementations which may have become necessary in different areas. (the clinical trials may be still in progress or the market approval has not been obtained yet etc.), then a declaration with respect to the legitimate reasons for the inability of using/working the patent should be presented to TPI. In the event that no evidence is submitted or no legitimate reason is shown or no offer for license is filed, the patent will not be deemed to be invalid, but will be subject to compulsory license, if any third person request granting of a compulsory license before the court.

RECORDING THE IMPORTATION DOCUMENTS IN THE PATENT REGISTER

TPI records importation documents of the patented product or the product obtained by patented methods as working proof upon receipt of sufficient documentation, which includes followings:

  • import certificate which is certified by Turkish Customs Authority and
  • invoices related to the import

the following documents can also be submitted to the TPI together with the abovementioned documentation:

  • Transportation certificate,
  • Catalogue of the products, and
  • ATR.1 Certificate of origin and Customs Declaration from exporting party.

The ATR.1 Certificate is a customs document used in trade between EU members and Turkey. The legal basis for the use of the certificate is the EU-Turkey Customs Union. It certifies that the product has been put in free circulation either in the EU or in Turkey.

Exporting part, importing party and the patent subject to the importation into Turkey shall clearly be indicated in said documents. If another company is done the exportation on behalf the company, a declaration of authorization should be submitted before the TPI. This declaration establishes and attests the relationship between the patentee and the exporting company.

In order to meet working obligations, you have to do one of the followings for once and ever within 3 years after the grant of the patent before the TPI:

  • offer for licensing,
  • the recordal of the Certificate of Use,
  • the recordal of the importation documents,
  • the recordal of the Declaration of the Legal Excuse.

 

When an offer for licensing is withdrawn, the patentee has to evidence the use of the patent by others means. In the event that nobody demands the patentee for granting a license, the patentee may withdraw his offer.

The three-year period begins from the publication date of the grant of the patent in the in the official Turkish Patent Bulletin and cannot be extended.

Although working proof can be sent to the TPI after the 3-year period, the validity of the document can only be determined by the court in lawsuit which may be brough by third parties on the basis of non - use of the Turkish patent within the 3 years period.

DECLARATION OF NON-USE

Justifiable reasons, which prevent the patentee from putting the patented products/process in use in Turkey, are required for filing a Declaration of Legal Excuse. The patentee can explain the legitimate reasons of non-use himself in a declaration. The declaration shall include the followings:

  • the name and the address of the patentee,
  • the signature of a person authorized to sign on behalf of the patentee firm,
  • the grant number of the patent,
  • the title of the invention,
  • the deadline of three years,
  • all of the technical, economical and legal reasons for non-use of the patent, and
  • intended time period in which the patentee intends to use the patented product/method.

 

Technical, economic or legal reasons of an objective nature shall be deemed to constitute legitimate excuses for non-working of the patent. Reasons that are beyond the control and contrary to the will of the patentee shall be acknowledged as obstacles to the working of the patented invention. On the other hand, according to recent practices of the TPI, a simple petition declaring reasons of non-use can be accepted by the TPI.

Information and documents with respect to the legitimate reasons for the inability of using/working the patent shall be submitted by the proprietor of the patent to the Institute for recording in the Patent Register within three years from the publication date in the relevant bulletin of the issuance of the patent. The fee as prescribed in the Schedule of Fees has to be paid for such recording.

Supporting documents can be copies of any official request filed with the regulatory authorities, to the ministry of health for obtaining a permission of marketing or any other documents without a confidential character evidencing that the patented product/process is still in clinical tests, experiences, etc.

The documents submitted to the TPI according to the working obligation are nut published in the Official Turkish Patent Bulletin.   

Third parties can also request examination of the file including these documents by paying related fee.


CONSEQUENCES OF NOT FULFILLING THE WORKING REQUIREMENTS OF A TURKISH PATENT

The Turkish patent is not abandoned or invalidated since no working obligation is met in the determined three-year period. The possible consequence would be a compulsory licensing which is granted by courts upon request of third parties. However the risk of the compulsory licensing is low. Until now, there is only one case for which the court has granted a compulsory license.

COMPULSORY LICENSE

A compulsory license shall be granted where no licensing offer has been made and where any one of the following situations obtains:

1. failure to put to work the patented invention in accordance with Article 96 of the Decree-Law 551;
2. dependency of the subject matter of patents as provided in Article 79 of the Decree-Law 551;
3. public-interest considerations as mentioned in Article 103 of the Decree-Law 551.

Any interested party may, on the expiry of the period provided for in Article 96 of the Decree-Law 551, request the grant of a compulsory license on the grounds that, at the time of the request, the patent was not being worked, that the delay in the working thereof was not due to legitimate factors or that the use thereof had been suspended for an uninterrupted period of three years for no legitimate reason.

CAUSES OF TERMINATION

Patents rights shall terminate in any of the following circumstances:
- expiry of the term of protection;
- surrender of the patent rights by the owner thereof;
- non-payment of annual and other fees by the prescribed time limits.

The subject matter of terminated patent rights shall become public property

UTILITY MODEL CERTIFICATES

State-of-the-Art search or substantive examination is not done for the utility model applications.

INVENTIONS PROTECTED BY GRANTING UTILITY MODEL CERTIFICATES

Inventions that are novel and applicable in industry shall be protected by the grant of utility model certificates.

INVENTIONS AND SUBJECT MATTER NOT ELIGIBLE FOR PROTECTION BY THE GRANT OF UTILITY MODEL CERTIFICATES

Utility model certificates shall not be granted for processes and products obtained by such processes, or for chemical compounds.

The owner of a utility model certificate shall enjoy the same protection as is conferred on the owner of a patent. A utility model certificate is granted for a non-renewable term of 10 years from the filing date of the application. Certificates of addition shall not be granted in respect of utility model certificates.

 

The State-of-the-Art Search for Utility Models
The state-of-the-art search report drawn up by the Institute for patents shall not be drawn up for utility model certificates. However, where the applicant for or owner of the utility model certificate makes a special request to the Institute for the drawing up of a state-of-the-art search report, such a report shall also be drawn up for the utility model certificate.

OPPOSITION BY THIRD PARTIES

Within three months following the publication of the application, any person or entity having an interest therein may oppose the application for the grant of a utility model certificate, stating the reasons therefor. The grounds for opposition shall be that the requirements for the grant of a utility model certificate are allegedly not fulfilled, and in particular that the subject matter lacks novelty in terms of Article 156 or that the description is inadequate, not being sufficiently explicit and comprehensive to permit the implementation of the invention.

WORKING REQUIREMENTS FOR UTILITY MODEL CERTIFICATES

According to the Decree-Law No. 551, in the event that requirements in the provisions related to the utility model are not fulfilled, the provisions of the patents in the subject Decree-Law are applicable for the utility model certificates. Therefore, the working obligations should be fulfilled within the three-year time period from the publication date of the grant decision of the Turkish utility model in the official Turkish Patent Bulletin.

ANNUAL FEES

The annual fees required for the protection of the patent application or of a patent shall be paid each year in advance at maturity during the full term of the protection period. The maturity date is the day and the month of the application date. Where the annual fees have not been paid within the time period, they may be paid within the following six month grace period provided that an additional fee has been paid. Where the annual fees have not been paid within these periods, the patent right shall expire as of the last date for the payment of this fee.

The annual fees of Turkish national phase applications under PCT Chapter I or II are paid in every year at the anniversary of the international filing date. The 2nd annual fees are paid to the Turkish Patent Institute during national phase entry as accumulated annual fees.

NON-PAYMENT OF ANNUAL FEES FOR REASONS OF FORCE MAJEURE

Where patent rights terminate for non-payment of annual fees and the owner of the patent produces evidence of the non-payment of the fee being attributable to force majeure, the patent shall be revalidated.

NATIONAL PHASE OF PCT APPLICATIONS

FILING REQUIREMENTS

The information and documents required for entering the national phase of a PCT application in Turkey are as follows:

  • Copies of the request form,
  • International publication,
  • International Search Report,
  • International Preliminary Examination Report (with annexes if any)
  • Any notification of change forms, if any
  • The information as to how the applicant (s) obtained the right to apply for a patent from the inventor(s) for which no documentary evidence is required.
  • The certified priority documents are not necessary.
  • No documents which should be executed by the applicant(s) and/or inventor(s), such as power of attorney, deed of assignment are required. 

LATE FILING

The search reports that have been prepared by the International Searching Authorities classified as competent under the Patent Cooperation Treaty or by other authorities with which the Institute has arranged a protocol for cooperation with respect to an application or applications which are the basis of priority for an application filed in Turkey shall be acceptable for processing by the Institute.

Where the reports have been prepared in a foreign language other than the English language, the Turkish Translation shall also be filed with the report.

CHOOSING PATENT SYSTEM

PCT Chapter II applications are prosecuted according to the patent system with substantive examination while entering into national phase in Turkey. For Chapter I applications, applicant may choose patent system with substantive examination or without substantive examination.

REQUEST FOR SUBSTANTIVE EXAMINATION

For patent applications entering into national phase in Turkey under PCT Chapter II, the International Preliminary Examination Report (IPER) is accepted as the first (substantive) examination report by the TPI.

In the event that the IPER report meets patentability criteria for all of the claims, the application is granted in Turkey. However, if there is an objection to the IPER, the second and the third examination procedures are to be applied for the Turkish patent application.

EUROPEAN REGIONAL PHASES OF PCT APPLICATIONS

The followings are required for European Regional Phases of PCT Applications:
1. Specification, claims, abstract and drawings (if any) on A4 paper (29,7 cm x 21 cm); 
2. Name and complete business address of the applicant(s);
3. Complete name(s) and address(es) of the inventor(s);  
4. Countries to be designated.  
5. Mode and date of the contract by which the invention has been assigned to the applicant(s) (term: within 16 months from the priority date);
6. In case of priority claim: 
a) Priority date, country and serial no. (term: filing date);
b) Uncertified English, German or French translation of each priority document;
7. No power of attorney has to be filed unless the European Patent Office explicitly requires it. Although not required, we prefer to have a simply signed PoA in our files.  

EUROPEAN PATENT VALIDATION IN TURKEY

The following information and documents are required for validation of a European Patent according to Implementing Regulations to the EPC on the grant of European
Patents in Turkey dated 9 January 2001:

For provisional protection under Article 67 EPC, Turkish translation of claims and payment of a special fee have to be submitted. Then, the translation of the claims is made public in the official Patent Bulletin of the Turkish Patent Institute. The followings are required to be submitted with the translation of the claims:

  1. Date and number of European Patent Application; 
  2. Publication date and number of the European Patent Application; 
  3. Claims, abstract and drawings (if any) on A4 paper (29,7 cm x 21 cm); 
  4. Name(s) and complete address(es) of the applicant(s);
  5. Name(s) and complete address(es) of the inventor(s); 
  6. Title of invention; 
  7. In case of priority claim; priority date, country and serial no.; 
  8. No power of attorney has to be filed unless the Turkish Patent Institute explicitly requires it.

EUROPEAN PATENT VALIDATION

The Turkish translation of the European Patent Specification has to be filed within 3 months from the date of the B1 publication for validation of a European patent in Turkey. B1 Publication must be provided with the translation of the European Patent Specification. Power of Attorney is not officially required.

COMPLETE PROTECTION

The followings are required to be submitted with the translation of the European Patent Specification:
1. Date and number of European Patent Application;
2. Publication date and number of the European Patent Application;
3. Date and number of European Patent Bulletin in which European Patent issued.
4. Specification, claims, abstract and drawings (if any) on A4 paper (29,7 cm x 21 cm);
5. Name(s) and complete address(es) of the applicant(s);
6. Name(s) and complete address(es) of the inventor(s);
7. In case of priority claim; priority date, country and serial no.;
8. No power of attorney has to be filed unless the Turkish Patent Institute explicitly requires it.

LONDON AGREEMENT

Turkey is not a party to the London Agreement for the validation of European Patents. The complete Turkish translation of the European patent is an obligation for the EP validation in Turkey.

EXTENDING VALIDATION TERM OF A EUROPEAN PATENT IN TURKEY

Although it is not possible to extend the validation term of a European Patent in Turkey, the term for submitting the Turkish translation of the European patent to the Turkish Patent Institute can be extended by paying a surcharge if the request for the extension for a validation is made within the validation term.

POWER OF ATTORNEY

It is not necessary to submit power of attorney unless the Turkish Patent Institute explicitly requires it. Although not required, we prefer to have a simply signed PoA in our files.

LITIGATION IN TURKEY

According to Article 146, paragraphs 1 and 2 of the Decree Law No. 551 pertaining to the protection of Turkish Utility Models and Turkish Patents in all court actions to be instituted or to be instituted in accordance of the Decree-Law No. 551 and against all decisions of the Turkish Patent Institute in implementing the provisions of the Decree-Law No. 551, the competent courts shall be the specialized courts in Turkey. Both civil and criminal actions regarding Intellectual and Industrial property matters in Turkey are handled by the “Civil Court of Intellectual and Industrial Property and Criminal Court of Intellectual and Industrial Property” established as specialized courts. Said courts are presently only established in Istanbul, Ankara and İzmir.

For the jurisdictions comprising more than one penal and/or civil court except for Istanbul, Ankara and İzmir, for the penal actions for all Intellectual and Industrial Property matters are proceeded by the 3rd Penal Court and the civil actions are separated between three Civil Courts within the directions of the High Council of Judges and Prosecutors.

All actions to be filed against Turkish Patent Institute by third persons who have suffered by the decisions of the Turkish Patent Institute are heard in the specialist court in Ankara.

CUSTOMS LAW

Under the legislation concerning protection on intellectual and industrial property rights at the request of the right holder or his representative or by their own initiative, where solid evidence is available that goods in question complies with the description of the counterfeit trademark or pirated copyright goods, customs authorities shall suspend the customs procedures of the goods infringing the rights of the persons concerned.

If, within a period of 10 days following the notification of the suspensive decision taken by the customs administration to the right holder, the authorities of the customs administration have not been informed that legal proceedings leading to a decision on the merits of the case have been initiated or that the duly empowered authority has taken precautionary measures, the customs procedure shall be carried out in accordance with the request of the declarant.