Patents of Invention
– Act No. 6769. The law was enacted on December 22, 2016 under the title Industrial Property Law. The large majority of the provisions of the Act are enforceable as of January 10, 2017. The prosecution of an application filed prior to January 10, 2017 will be finalized in terms of the former legislation.
Chapter Four of Act No. 6769 consists of the provisions of Articles 82-145. They deal with matters solely concerning patents and utility models.
Chapter Five of Act No. 6769 comprises the provisions of Articles 146-193. They deal with matters applicable collectively concerning patents, utility models, marks, designs and geographical indications.
– Agreement between NATO Organization Members concerning the processing and grant of patents in respect of secret inventions (published in the Official Gazette No. 10910 of September 19, 1961).
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since May 12, 1976.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 29, 1985.
– WTO’s TRIPS Agreement, since March 26, 1995.
– Patent Cooperation Treaty (PCT), since January 1, 1996.
– Strasbourg Agreement Concerning the International Patent Classification, since October 1, 1996.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since November 30, 1998.
– European Patent Convention, since November 1, 2000. EPC 2000 is ratified and entered into force on December 13, 2007.
Applicant: an inventor or his assignee.
Applicants not living in the country: must appoint a local patent agent.
Naming of inventor(s): it is compulsory to submit the name and address of the inventor(s) when filing the application, however, the inventor(s) may request that his/her/their name(s) is(are) not publicized.
Notion of the invention: is considered to have been met if an invention is novel, exhibits inventive merit and has industrial applicability.
Types of patents: examined (twenty years of protection from application date).
Novelty: is considered to subsist in an invention if the very information does not form a part of the state of the art and is not available to the public anywhere in the world. A disclosure may affect the patentability of an invention if it is made prior to the filing of a patent application in Turkey or the date of priority (if any) and comprises disclosure in respect of the initially filed context of a Turkish patent and/or utility model application with an earlier date of filing but published either later or the very day of filing of the application concerned.
Novelty grace period: a disclosure non-affecting the patentability of an invention is a disclosure made during a twelve-month term preceding the filing of a patent application in Turkey or the date of priority (if any), and which is made either by the inventor, a third party that has directly or indirectly obtained the information from the inventor, or by an office which, through publication, either disclosed another application by the inventor which it should not have published or published an application filed by a third party but incorporating disclosure originating from the inventor without the consent/authorization of the inventor.
Exceptions to protection: (a) discoveries, scientific theories, purely mathematical methods; (b) principles, methods or rules for playing a game, doing business or performing a mental act; (c) literary, artistic or scientific works, aesthetic creations or computer software; (d) essentially biological processes for plant or animal varieties and reproduction of same with the exception of microbiological processes or a product obtained by means of such processes; (e) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene; (f) processes for cloning human beings; processes for modifying the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; (g) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to men or animals, and also animals resulting from such processes; (h) literary, artistic or scientific works, aesthetic creations or computer software; (i) presentation of information; and (j) inventions contrary to public order or morality. Inventions directed to pharmaceutical products are patentable as of January 1, 1999.
Confirmation patents: not possible.
Secret patents: may be applied for by members of the North Atlantic Treaty Organization. Additionally, the prosecution of a patent application may be required to proceed in a manner classified if the subject of an invention is considered to be of interest for Turkish national defense purposes.
Priorities: Paris Convention applies; one or more priorities may be claimed; internal priority is recognized.
Territory covered: Republic of Turkey.
Filing requirements for a national application (to be sent to resident agent):
1. Full name, nationality and address of applicant and inventor(s);
2. Particulars from which Convention priority derives (if any);
3. Specification, comprising a title, a description of the invention, the claims reciting the features of the invention, and a short summary;
4. Drawings, if any;
5. Priority document, if Convention priority is claimed, is to be filed within three months from the date of filing (can be filed electronically).
Filing requirements for a PCT application (to be sent to resident agent):
1. A copy of the publication of the international application;
2. A copy of the international search report;
3. A copy of the international preliminary report on patentability
4. Specification, comprising a title, a description of the invention, the claims reciting the features of the invention, and a short summary;
5. Drawings, if any.
Filing requirements for validation of a European patent (to be sent to resident agent):
1. A copy of the European patent as published;
2. If the inventor(s) and/or applicant(s) is of Turkish nationality, the Turkish Identity Number of the inventor(s) and/or the Tax Number of the applicant(s) is required.
Note: regardless of whether an application is to be filed under the provisions of the PCT or in validation of a European patent or as a national patent application, a patent specification needs to be filed in the Turkish language. In case the translation work is not completed to enable the filing of a patent specification in Turkish by a prescribed time limit, the necessary may be attended to within specific extended time limit(s) on payment of an official fee and/or fine therefor.
Minimum requirements to obtain a filing date: application petition; full name, nationality and address of applicant(s); a description of the invention (not necessarily claims and/or drawings) or reference to a previously filed application.
Electronic filing: is mandatory.
PCT applications: time limit for entering the national phase under both Chapter I and Chapter II: 30 months. Such entry may be made by the end of the 33rd month by payment of an additional late filing fee.
European patent validation requirements: (a) appointment of a national professional representative is required; (b) the time limit for submitting the Turkish translation of the full patent specification is three months following the publication of a decision in respect of the grant of a European patent. An extension for an additional two months may be obtained for submitting the Turkish translation of a European patent specification if application for validation is timely filed; (c) the annuity which is due within the three-month period starting from the date of the decision to grant, shall be deemed to have been validly paid, if it is paid within that period. Turkey has not signed the London Agreement 2000.
Examination: by the Turkish Patent and Trademark Office as to form and substance. A search needs to be requested and the search fee paid, within twelve months from the filing date. It is also possible to file a search request upon filing of the application.The failure to timely make such a request causes the application deemed to be withdrawn. It is required that a request for substantive examination be filed within three months following receiving the search report, the failure of which causes the application deemed to be withdrawn.
Accelerated examination: may be requested under bilateral agreements made with Japan and Spain within the scope of the PPH Pilot Programs commenced with the Japan Patent Office (JPO) and the Spanish Patent and Trademark Office (SPTO) based on JPO/SPTO applications or PCT international work products. Under the pilot programs of the Patent Prosecution Highway (PPH), an applicant who receives a positive ruling on patent claim(s) from either the JPO or SPTO or the Turkish Patent and Trademark Office (TPTO), may request accelerated prosecution of corresponding claim(s) in the other office.
Amendment of application: possible during prosecution, and so long as the substantive examination is not completed.
Interference: possible, in the form of observation by third parties.
Disputes about ownership or novelty: may be settled before a civil court.
Division: compulsory to meet the requirement of unity of invention. Filing of a divisional application is possible as long as a parent application is not patented or rejected. A divisional application to be derived from an application that itself is a divisional application may be filed with the Patent Office.
Objections of the Office: a patent application may be examined at most three times. If the third examination report is not favorable, the application will be rejected.
Application kept secret: if applied for a secret patent.
Opposition to application filed: not provided for.
Publication: entire patent specification as filed is available on expiration of eighteen months from the filing date or, where priority is claimed, from the earliest priority date.
Transformation into a utility model application: possible. Prior user disputes: may be settled before a court.
Beginning of provisional protection: from the date of filing.
Duration – extension: twenty years. This term shall not be extended.
Annuities – grace period: payable on or before the anniversary of the filing date of a patent/patent application or with fine, within six months following the due date.
Marking of patented goods: optional.
Text of marking: if marked, it is mandatory to specify the serial number of one or more patents.
Revocation: can be sought both before the Patent Office, by lodging a post-grant opposition, or before a civil court.
Assignment: possible for the entire or part of the ownership. The deed must bear the signatures of both parties, carry the notarial attestation of both parties’ signatures and comprise legalization. Also, it is mandatory to state the consideration fee and the application/registration number(s) pertaining to the case(s) to be assigned in the deed of assignment.
License for exploitation: to be executed in the form of an agreement. The deed must bear the signatures of both parties. The following information should be disclosed in a license agreement: (1) patent application/registration number; (2) term of license; (3) type of license; and (4) countries concerned.
Working of patent: compulsory. According to the established case law, importation, sales or local manufacture and sales under a license are considered as meeting working conditions. An application for recordal of use or non-use may be filed within three years following the publication of a notice of grant of the patent. Declaring use or non-use may not prevent compulsory license requests that may be sought by introducing a lawsuit, i.e. compulsory license requests may not be filed at the Patent Office. Applying for recordal of use/non-use may dissuade third parties, who notice that an application for the recordal has been filed with the Patent Office, from requesting a compulsory license. Compulsory license is decided by a civil court whether it is to be granted and it is a statutory requirement that the claimant should have approached the patentee to seek a contractual license. The working must not be interrupted for more than three consecutive years.
Modification of Protection after Granting
Modification after grant: possible in opposition proceedings. Restriction of issued patents is possible.
Conversion of a patent into a utility model: not possible after acceptance; also vice versa.
Rights of prior user: provided for.
Compulsory licenses: possible if the working requirement is not satisfied, if there exists dependency between patents, if working of a patent is in the interest of the public at large, if there arises a public health need in other countries for the purpose of exportation of pharmaceutical products, if it is not possible for a plant breeder to develop a new plant variety without infringing a patent, if, in using a patent, the patentee’s acts inhibit, contravene or restrict competition.
Opposition to granted patents: possible.
Expropriation: not provided for.
Nullification: a patent may be nullified upon the decision of the Patent and Trademark Office or a competent court if (a) the patent comprises unpatentable subject matter, the subject matter of the patent is found to be not novel, not to include inventive step or not industrially applicable; (b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) it is proved that the subject matter of the patent exceeds the scope of the application filed or, the subject matter of the patent exceeds the scope of the application filed initially, in the case where the certificate is based on a divisional application filed or on another application filed subsequent to the usurpation of the right to a patent; (d) it is proved that the applicant is not entitled to the right to request the patentor; or (e) it is proved that the scope of protection of the patent as granted is exceeded. A nullification request in accordance with (d) may be filed only by the inventor or his successors in title. Partial nullification of a patent is possible.
Validation of invalidated patents: the proprietor of a patent who was unable to observe a time limit that resulted in the rejection of a patent would have the possibility to have his rights re-established upon request if it is shown that due care had been taken to prevent an adverse outcome.
Infringement: the rights of a patentee are infringed if a third party manufactures the products or uses the means constituting the subject of a patent.
Penalties: not provided for.
Enforcement: patent rights may be enforced by the owner or the exclusive license holder.