UTILITY MODELS IN TURKEY

Utility Models granted in Turkey have the same effect as the patent documents, but their characteristics mainly differ from patents especially within the following points;

  • Utility Models confer a protection term of 10-years starting from the filing date unlike the 20-years protection term of the patents.
  • Utility Models are not treated with search or substantial examination. Only a formal examination is carried out upon filing. However, Turkish PTO has the competence to reject utility model applications if they prima facie lack of a novelty according to Decree Law No: 551 - Art.160.
  • Utility Models does not require and inventive step. Novelty and Industrial Applicability would be the sufficient criterion for grant.
  • Subject matters such as any methods/processes and chemical compounds/compositions are excluded from protection.

Utility models can form basis as a priority and are normally published at 18th month from the earliest priority date. Third parties are given the opportunity to submit their observations within 3 months after publication of the UM application. However, applicant has the choice to disregard the third party observations or make appropriate amendments by its own volition, and request a grant based on the proposed text. The Turkish PTO has no competence to carry out a substantive examination based on the said third observations and is obliged to grant the application based on the proposed text of the applicant.

Nullity actions based on utility models, therefore dramatically increases in Turkey because the scope of protection conferred by the utility models is almost entirely dependent on applicant’s desire and there is no mechanism to carry out a substantive examination.

Costs of a Utility Model:

Official fees: EUR-12,00 (filing fee) + EUR-90,00 (grant fee)
There are no additional fees, for instance, for excessive number of pages and claims.

Renewal Fees:

Turkish UM applications are subject to renewal fees from the second and each subsequent year calculated from the filing date of the application. A renewal fee is due on the same day of the month containing the anniversary of the date of filing of the UM application. If the applicant fails to do so, such renewal may still be paid within an additional term of six months with surcharge.

Failure to pay the renewal fees within the additional 6 months results in loss of rights which can only be remedied with a request for re-establishment of rights. TPI strictly applies the “all due care” criterion such that the reason for failure was caused by unforeseeable reasons and applicant has duly spent every effort for not to cause any loss of rights.

Conversion of a patent application to a Utility Model:

Patent applications can be converted into a utility model application provided that the applicant files a timely request at one of the points of the procedure;

  • within the six month term after publication of the search report, if the applicant chose to obtain an unexamined patent,
  • within the 3 months term of reply third party observations that are filed within the 6 months term after publication of the search report, if the applicant chose to obtain an examined patent.

Once the applicant misses the terms mentioned above, there is no more the opportunity to make this conversion in subsequent stages. Conversion would be particularly preferred if the search report of the patent application cites documents in category “Y” relevant for inventive step. This means a novel subject matter may still be protected because an inventive step is not sought for Utility Models.