“ On the way to success in opposition proceedings...”
Just as in other legal disputes, INVOKAT takes active role in oppositions of patents, trademarks and designs. Our firm can assume representation before the Turkish PTO, EPO and other relevant authorities. Running a successful procedure in oppositions is important for the sake of eliminating costly, lengthy and complicated procedures of litigations. A successful opposition also elimanates potential damages that may be caused by the competitors.
Opposition Against a Turkish Patent:
An opposition against a Turkish patent can be filed before the Turkish PTO (TURKPATENT) within 6 months after publication of the decision for grant in the official patent bulletin (Art. 99(1) IP Law No 6769). A successful opposition procedure may eliminate or alleviate long procedures at the national courts. Grounds for an opposition against a national patent can be summerized as follows:
- Art. 99(1)(a) IP Law: Subject matter of the patent is not patentable (Art. 82-83 IP Law),
- Art. 99(1)(b) IP Law: 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,
- Art. 99(1)(c) IP Law: The subject-matter of the patent extends beyond the content of the application as filed.
The patent proprietor can amend the application upon filing a reply against grounds of the opposition. Oral proceedings are not defined by law and therefore decision of TURKPATENT is issued based on written proceedings. Unlike the Opposition proceedings of the EPO that require at least an allowable set of claims, TURKPATENT may invite the patent proprietor to file amendments and corrections if at least one claim is considered to be allowable (Art. 99(6) IP Law). Revocation of the patent has the ex tunc effect such that the patent is deemed not to have had the effect since the beginning.
An opposition against Turkish part of a granted European patent cannot be filed at TURKPATENT.
Opposition Against a European Patent:
We represent our clients before the EPO Opposition Divisions and Boards of Appeal both in written proceedings and oral proceedings.
An opposition against a European patent may be filed 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 nullity action in national level. Grounds for an opposition against a European patent can be summerized as follows:
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.
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. 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 the basis of the case such as if the parties are the same in the 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. On the contrary, 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.
Opposition to a Trademark in Turkey:
Trademark applications are published in the official bulletin of the Turkish PTO once the formal requirements have been met and the Turkish PTO had not raised objections after an examination on “Absolute Grounds for Refusal” according to Art. 5, IP Law No 6769.
Pursuant to Art. 18, IP Law No 6769, third parties may file an opposition against a trademark application within 2 months after publication, on the basis of the Absolute Grounds for Refusal (Art. 5, IP Law No 6769) and Relative Grounds for Refusal (Art. 6, IP Law No 6769).
Opposition to an Industrial Design in Turkey:
Once TURKPATENT comes to the conlusion that criteria for grant of a design have been met, The relevant design is published in the official bulletin of the Turkish PTO along with a decision to grant.
Third parties may oppose to a published design within 3 months after publication of the design in the offical bulletin. Pursuant to Art. 67(2), IP Law No 6769, grounds for an opposition may include the provisions as prescribed in Art. 55(1), 55(2), 56, 57, 58(4), 64(6)(c) of IP Law No 6769. Other grounds for opposition may include that the design application has been made with bad faith and said application contains unauthorized use of an intellectual property right.