PATENT INFRINGEMENT ACTIONS IN TURKEY

 

Infringement proceedings, either as a plaintiff or defendant require particular attention to all points of law and technical issues in order to avoid damages which can be harmful and inexpiable. Being aware of this, our professionals spend excessive effort in specific points of law and technology for strongly defending the interests of our clients. 

In the recent years, patent infringement cases dramatically increased in Turkey as the specialized IP courts are inclined to grant preliminary injunctions right after a favourable expert report, and also because of the low costs of a legal action before the IP courts, where patentees generally do not abstain from asserting infringement against third parties in a mode “worth to try…”. The same applies also to potential infringers seeking declaratory judgment on non-infringement against a particular patent. Because of the low costs of the court fees, again the third parties having interest on a particular technology do not refrain from filing lawsuits seeking a declaratory judgment against the patent proprietor. Following are the basic principles of both kinds of legal actions.

 

Infringement Actions

The following acts are considered as patent infringement under DL-551-Art. 136:

  • Implementing the invention in whole or in part;
  • Producing and commercializing the same in any way;
  • If the patent concerns a process, commercializing the product directly obtained through such process;
  • Enlarging the scope of the rights granted by the patent holder on the basis of a contractual license or granted by compulsory license or transferring such rights to third persons, without permission;
  • Participating in acts of infringement, or assisting or inducing/encouraging/facilitating them, in any way and under any circumstances;
  • Refraining from declaring the source of the infringing activity.

 

In these cases, the right holder may initiate a civil law action against the infringing party or the contributor thereof, and request one or more of the following from the relevant court (DL-551-Art. 137);

  • stopping of the infringing activities,
  • compensation of material and moral damages/prejudices incurred,
  • confiscation of infringing products manufactured or imported, and of means directly used in manufacturing such products and/or permitting the use of a patented process,
  • proprietorship over the products and means confiscated,
  • precautionary measures for preventing the continued infringement,
  • disclosure by means of publication the court’s judgment rendered against the party infringing the rights conferred by the patent.
 

Compensation of Damages

In principle, the patent proprietor can request compensation of material & moral damages in an infringement action and such compensation of material damages is calculated based on loss of income. DL-551-Art. 140 prescribes that the loss of income is calculated according to one of the evaluation methods outlined below:

  • According to the income that the proprietor of the patent might have possibly generated if the competition of the infringing party did not exist;
  • According to the income generated by the infringing party from the use of the patent;
  • According to a license fee that would have been paid if the party, infringing the patent right, would have lawfully utilized the patent under a licensing contract.

 

Competent Court

The competent court, for the institution of legal proceedings, by the proprietor of a patent against third parties, is the court of the domicile of the plaintiff or of the place where the offence was committed or of the place where the act of infringement produced effect. Where the plaintiff is not domiciled in Turkey, the competent court is the court of the location of the business premises of the registered agent and when the agent’s entry in the register has been cancelled, the court where the headquarters of the Turkish Patent Institute is located (DL-551-Art. 137). Currently, there are specialized Courts of Intellectual Property in Istanbul, Ankara and Izmir.

 

Panel of Experts in Infringement Actions

Within the court cases pertaining to patents having technical nature, the Turkish courts frequently appoint a panel of experts and obtain an expert’s report in both revocation and infringement cases. The composition of the panel of experts is of vital importance. In other words, it is quite important the panel of experts to include at least one patent attorney having technical background in order to ensure that description and claims would be properly examined vis-a-vis the pertinent prior art and/or activities of potential infringers. It is very frequent to obtain more than one experts’ report or additional report(s) in a single case (CPC-Art. 281). The panel of experts cannot provide legal opinions (CPC-Art. 266). However, as the nature of the nullity actions require, panel of experts are expected to make reference to the pertinent law by which an infringement opinion is relied upon.

 

Joinder of Nullity & Infringement Actions

The present law system allows a combined jurisdiction if the nullity and infringement have an interconnection (CPC-Art. 166). After initiation of a nullity action, for instance, patentee may initiate an infringement action, or if any party is accused of an infringement, it is quite frequent that such party initiates a nullity action as a counter attack. In line with a request of consolidation of the cases, the court of the second action may decide upon joinder of the actions, and in this case the court where the first action is initiated becomes the competent court for the consolidated actions.

Apart from the cases above, consolidation of the actions would also possible for a nullity action and declaration of non-infringement (DL-551, Art. 149). In other words, any party may file a declaration of non-infringement along with a request to revoke the patent in question.

 

Declaratory Judgment for Non-infringement

This is an instrument of law widely used in Turkey by any party having interest in a patented technology in order to be in the safe side. Most of the lawsuits in this respect are filed in the pharmaceutical field before starting a particular business relating to certain drugs. For this reason it has become a common strategy for the pharmaceutical companies seeking a declaratory judgment and simultaneously submitting the marketing authorization files to the Ministry of Health which ensures the generic companies to enter into the market safely and without time loss. Normally, a lawsuit pertaining to a declaratory action and a nullity action can be initiated in the same court, but nothing hinders the patent proprietor’s counter claims regarding infringement. DL-551, Art. 149 prescribes that any interested party may institute proceedings of this kind against the patent proprietor and may serve a prior notice to the proprietor asking its observations relating to infringement. However, in practice, the courts do not apply this as a rule and precondition of a valid action, and therefore any lawsuit filed by third parties having interest in the patented technology is well accepted irrespective of whether such prior notice is served to the patent proprietor.

 

Doctrine of Equivalents

Under the current legislation, scope of protection conferred by the patent is determined according to claims with due regard to the patent specification like any jurisdiction of other countries. DL-551, Art. 83, however prescribes that claims cannot be interpreted solely with the wording thereof. This way of interpretation requires an evaluation under doctrine of equivalents. Decree Law mentioned above states in this respect that an appropriate way of evaluating equivalence is the function-way-result test. Doctrine of Estoppel is also prescribed in this legislation as an effective tool which requires that due account to be taken of any statement made by the applicant during the patent granting procedure or by the holder of the patent during the term of validity of the patent. Of course, equivalence is determined on case-to-case basis and it may require consideration of the technical effect and/or obviousness of the equivalent features. 

 

Bolar Exemption

DL-551, Art. 75/f prescribes that any activities for purposes of obtaining a marketing authorization as well as the tests and experiments regarding the products subject to the said marketing authorization are out of the context of the patent protection. Therefore, obtaining a marketing authorization per se is considered as a non-infringing activity, and additionally the Ministry of Health does not wait for the expiry of the patent term and/or data exclusivity term in order to grant a marketing authorization. Any further activity of this party, such as entry into the price list of Social Security Institution, however constitutes an infringement of patent rights which justifies lawful measures to be taken in favour of the patent proprietor.

 

SPCs and Patent Term Extensions

Under the current law, there is no provision for instruments extending the protection term such as Supplementary Protection Certificate or Patent Term Adjustments.