PATENT INVALIDITY ACTIONS IN TURKEY

 

It is one of our primary objectives to defend our clients’ interests at highest level in patent related legal disputes. It is also our aim to provide success oriented and proactive services in nullity actions before the European Patent Office (EPO) and Specialized IP Courts in the country.

 

Invalidity actions before the Specialized Courts of Intellectual Property

The competent court in nullity cases regarding patents and utility models in Turkey is determined according to the residence of the patentee, or otherwise if the patentee is domiciled in abroad, according to the residence of the registered patent attorney representing the patentee (DL-551-Art. 137).

Patent invalidity actions can be initiated on the basis of the grounds according to DL-551-Art. 129 as summarized below:

a – Subject matter of the patent does not comply with DL-551 Articles 5 to 10;

In this context; at least one of the grounds given below may cause nullity of the patent in Turkey:

IF THE SUBJECT MATTER OF THE INVENTION IS;

  • not NOVEL,
  • does not involve an INVENTIVE STEP,
  • not INDUSTRIALLY APPLICABLE,
  • involves BUSINESS METHODS (if the subject matter has no technical content),
  • purely based on a SOFTWARE (inventions having a technical character and defined with a concrete system and method are out of this context),
  • involves a method of SURGERY/THERAPY/DIAGNOSIS implemented on a living human or animal body,
  • relates to PLANT OR ANIMAL VARIETIES (including the inventions substantially based on biological breeding or growing methods),
  • NON-TECHNICAL and having NO TECHNICAL IMPROVEMENT
(Discoveries, theories, mathematical methods, rules of playing games, literary/ artistic/esthetic creations, collection and presentation of information, inventions contrary to ordre public etc.).
b - Invention is not disclosed  in a manner sufficiently clear and complete  for  it  to  be  carried  out  by  a  person skilled in the art; This should not be confused with the “clarity” issue as prescribed under DL-551, Art. 47. The reason of revocation in fact refers to non-existence of the sufficient information within the application as originally filed in order to implement the invention with the information claimed and/or described. Disclosing invention in a manner covering also non-working embodiments is also regarded as ground for revocation.
c – Subject matter of the claims extends beyond the application as originally filed; This is a ground for revocation if the patentee has filed amendments during prosecution of the patent application, and such amendments have no basis at all within the application as originally filed.
d – Patentee is not entitled to the grant of the patent; Any third parties having the rights on the granted patent would have the right to request revocation of the patent if the patentee per se is not entitled to the grant of the patent.

 

BURDEN OF PROOF

As prescribed by DL-551, Art. 129 grounds of revocation are subject to proof which is also set out in Art. 190 of the Civil Procedure Code (CPC). There are no special provisions as to the degree and strength of the proof. Proofs such as patent documents, scientific articles and publications are regarded as reliable sources of information, and therefore are not subject to proof as to their actual publication dates. But the courts in Turkey have diversified practices as regards “prior use”. Product catalogues, are sometimes taken as a valid evidence of prior use even if the publication dates thereof are mostly questionable while declaration of a witness is not a common way of evidencing used by the parties involved in revocation proceedings.

 

DISCLOSURES OF THE PATENTEE

There is a grace period of 12 months defined by the law pertaining to disclosures of the patentee himself. Such disclosures to the public up to 12 months prior to filing date or priority date (if any) do not have an effect on patentability. This exclusion does also extend to disclosures of third parties having been acknowledged by the invention and disclosed it with or without consent of the applicant.

 

PATENT DOCUMENTS HAVING EARLIER FILING DATE BUT LATER PUBLICATION DATE

DL-551, Art. 7 prescribes that patent documents having an earlier filing date but having a later publication date are comprised in state of the art. There is however no explicit provision as to whether such documents constituting prior rights would also be considered in assessment of inventive step. Even the legislation in effect incites to use them in deciding of the inventive step by admitting them within state of the art without any exclusion. Despite of the unclear provisions in the law, the situation in practice is parallel to the provisions of the EPC such that they are considered solely for NOVELTY purposes in line with Art. 54(3) and 56 EPC.

 

SECOND MEDICAL USE

Provisions relating to further use of the known medicaments or their different indications have been adopted in the EPC via Art. 54(4) and 54(5) in frame of EPC2000 which entered into force on 13th December 2007. Therefore a legal basis exists for the European patents having been granted after this date by way of DL-551, Art. 4 which prescribes that international agreements prevail if they are more favorable for the right holder. However, as the European patents granted before 13.12.2013 are subject to the provisions of the EPC1973, the national courts sometimes cast doubt on validity of these patents because the former version of the EPC had no explicit basis for the second medical use claims. This is mainly because the basis for the second medical use claims (i.e. Swiss type claims) was the decision G 5/83 of the Enlarged Board of Appeal of the EPO and this is of no binding in the Turkish jurisdiction.

In consideration of the facts mentioned above, patent applications having a subject matter concerning second medical use and having been entered into the national phase in Turkey via PCT route seem to be in a hurdle in terms of revocation. This is because the Decree Law No: 551 that is currently in force does not contain special provisions as to the second medical use claims. The same applies also inventions in the field of biotechnology because the provisions relating to the biotechnological inventions as adopted with 98/44/EC in the EPC have not yet been adopted in the Decree Law No: 551 in Turkey.

 

PANEL OF EXPERTS IN NULLITY ACTIONS

Within the court cases pertaining to patents having technical nature, the Turkish courts frequently appoint a panel of experts and obtain an experts 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-á-vis the pertinent prior art. 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 a nullity opinion is relied upon.

 

JOINDER OF NULLITY AND 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.

 

NULLITY ACTIONS AGAINTS UNEXAMINED PATENTS

The present legislation allows selection of an examined or unexamined patent system in patent granting procedures. “Even if the search report would be negative” it is possible to obtain an unexamined patent that confers a protection term of 7-years. Patentee as well as the third parties are entitled to request examination of the patent anytime during the 7-years protection term. Unexamined patents, in this case turn out to the pending status and are treated with a substantive examination.

It is quite disadvantageous for a patentee facing a nullity action if the unexamined patent has a negative search report and it follows that even if an examination request is filed later on, the courts mostly consider the legal status on the date of initiation of the legal action and continue proceedings without prejudicial question.

On the other hand, it would also be possible for the third parties to obtain a procedural refusal of an unexamined patent by requesting a substantive examination before initiating a nullity action. In this way of strategy, use of the patent rights against the said parties is prohibited and the said third parties also obtain a safeguard against surprising litigations or preliminary injunctions until decision of the grant (if not refused). It is generally advisable to file third party observations within 6 months after publication of the examination request in order to prevent a possible grant based on the application derived from the unexamined patent. In this case however there appear some risks to a certain extent because, if the unexamined patent in fact contains a patentable subject matter and is granted after the substantive examination, the protection terms extends from 7 years to 20 years which would be disadvantageous for the demandant third party.

 

NULLITY ACTIONS AGAINST UTILITY MODELS

An “inventive step” is not a prerequisite for utility models in Turkey. Therefore, in accordance with DL-551, Art. 165, lack of an inventive step is not a ground for revocation in nullity actions against utility models. It would however be possible to revoke a utility model if it contains and claims a subject matter directed to a method/process, product-by-process, or chemical material, all of which are valid grounds for revocation. Grounds for revocation apart from these are the same as defined in DL-551, Art. 129 as mentioned above.

Utility models theoretically provide same degree of protection as patents for a 10-years term but it could be a hurdle to revoke these documents because they are exempted of an inventive step. If there is no other ground, novelty is the sole ground in terms of patentability and even a small difference in comparison to prior art may ensure validity of the document.

 

CLAIM AMENDMENTS DURING NULLITY ACTIONS

Post-grant amendments are not allowed in the current legislation. Patentee may however renounce of one or more claims and patent would then remain valid with rest of the claims (DL-551, Art. 135).

It is normally not an established practice to amend the claims during nullity proceedings. There is no standard practice among the courts as to consideration of the renouncements under DL-551, Art. 135 in pending proceedings. However, it is already known that post-grant limitations (Art. 105a EPC) and even amendments in nullity proceedings (Art. 138/3 EPC) are allowed in the context of the EPC.

It is generally a well-established practice to wait for the outcome of limitation proceedings and to continue judgment according to the newly filed claims if the limitation proceedings are initiated before the EPO during the nullity proceedings in the national courts. It is however frequently observed that the national courts do not allow amendments before the courts per se, which means that Art. 138/3 is mostly not applicable within the Turkish courts.

 

PARTIAL REVOCATION

According to DL-551, Art. 129, revocation can be ruled for particular claims. Patent then remains valid for the rest of the claims. In a nullity case, therefore patentability of all of the claims should be examined as otherwise a procedural violation occurs in the jurisdiction. While most of the courts comply with this basic rule, it happens sometimes that some courts conclude the investigation partially based on the independent claims and then conclude with a decision on validity of all claims. According to these courts once the independent claims are revoked, dependent claims are considered to be not patentable which is clearly an incorrect judgment.

 

Requesting revocation before the European Patent Office (EPO)

European patents may be opposed within 9 months after publication of the mention of the grant in the European Patent Bulletin (Art. 99-EPC). Outcome of these proceedings is binding over states where the European patent has taken effect. Thus, it is sometimes more attractive to initiate opposition proceedings before the EPO rather than initiating a legal action in national level. Grounds for revocation before the EPO are somewhat more limited as compared to the national legislation. These can be summarized as;

  • Art. 100(a) EPC: Subject matter of the European patent is not patentable (Art. 52-57 EPC),
  • Art. 100(b) EPC: The European 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,
  • Art. 100(c) EPC: The subject-matter of the European patent extends beyond the content of the application as filed.

Request of revocation at the EPO is subject to proof and decisions of the Boards of Appeal are mostly decisive in determination of relevance of the evidences. For instance it is well established that evidence should be “beyond reasonable doubt” if such evidence is produced by the opponent while in other cases the applied principle becomes “balance of probabilities”.

 

PREJUDICIAL QUESTION (SUSPENSION) IN CASE OF PARALLEL OPPOSITON PROCEEDINGS

The national courts in Turkey may consider the parallel opposition proceedings before the EPO as a reason to suspend the court proceedings in national level. The courts consider some basic parameters on case by case basis such as if the parties are the same in legal dispute at national level and before the EPO, and if the expected decision would take longer than the proceedings in national level. Sometimes it may happen that EPO opposition proceedings take about 4-5 years along with the appeal proceedings which brings the judges to the conclusion that proceedings in national level may be finalized earlier than the EPO, and in this case, proceedings regarding nullity are not suspended. Controversially, if the EPO proceedings could be expected to end up with a decision in near future, proceedings are suspended for the sake of procedural economy.

 

PROCEEDINGS OF APPEAL IN THE EPO

Decisions of the EPO Opposition Divisions can be appealed (EPC-Art. 106). At the end of the proceedings, the Boards of Appeal may submit the case back to the opposition division for further deliberations or may assume responsibility of the first instance and conclude with grant of the patent in amended/unamended form or revocation of the patent in its entirety.

 

PROCEEDINGS BEFORE THE SUPREME COURT OF APPEAL IN TURKEY

Decisions of the first instance courts, such as Specialized IP Courts in Turkey can be appealed before the Supreme Court in Ankara. The Judges having investigation on the court file and the appeal decision have a legal background, and therefore the technical merits of the case are usually out of this jurisdiction. Mostly, procedural violations and substantial errors of the first instance court are considered as a reason of reversing the appealed decision.