Turkey is preparing to replace the existing decree-laws concerning the protection of trademarks, patents, industrial designs and geographical indications with the draft IP Law, covering all the aforementioned rights. The draft was published for public consultation from February 24 to March 4 2016, and has now been sent to Parliament for enactment. This update examines some of the major changes proposed.
Post-grant opposition proceedings
A third party may file an opposition against a granted patent within six months of its publication. Once the opposition is filed, the Turkish Patent Institute (TPI) notifies and invites the patentee to submit its opinion or to amend its patent application. Both the opposition and the patentee's opinion and amendment will be examined by a board to be established at the TPI. The composition of the board and other procedures will be clarified with the implementing regulations.
Biotech patents
The draft IP Law provides some exceptions to the general concept of biotechnological inventions. According to the draft, simple discoveries of human gene sequences or processes for cloning human beings are not patentable subject matter. If interpreted differently, the provision allows a biotechnological invention which falls outside the scope of the exception to be patentable.
Second medical use patents
The proposed draft IP Law is silent concerning the patentability of second medical use inventions, despite a recent Supreme Court ruling that second medical use inventions are patentable. Turkey acknowledges the protection of second medical use patents validated through the European Patent Convention.
Abolition of seven-year patent system
The draft IP Law abolishes all provisions relating to the short seven-year patent term which could be obtained without substantive examination. Under the new regime, it will be compulsory to request substantive examination; if no such request is made, the patent application will be withdrawn. Therefore, Turkey is expected to provide a stronger patent framework with improved quality as the utility model system remains in effect, particularly for small and medium-sized enterprises.
Utility model system re-adapted
According to the draft IP law, no utility model certificate will be granted for:
- biotechnological inventions;
- chemical processes and products obtained by such processes, or chemical products;
- pharmaceutical processes and products obtained by such processes, or pharmaceutical products; and
- processes and products obtained by such processes.
The draft law introduces a compulsory novelty search for utility model applications, with the possibility of the applicant filing amendments during the registration proceedings. Post-grant opposition proceedings will not be available for utility models.
Employee invention system for universities
The draft IP law includes a new provision to remove the so-called 'professors' privilege'. This means that all inventions made by scientific staff (including both regular and PhD students) in their employment function are deemed to belong to the university, provided that certain conditions are met. The draft states that scientific staff will be entitled to claim one-third of the total income raised by the patented invention.
Burden of proof in process patents
The existing decree-law is confusing in regard to matters where the burden of proof should shift to the defendant. The draft IP Law includes an amendment to remove the contradiction. According to the new text, the court will have discretion to shift the burden of proof where the infringed process is not related to a new patented product, whereas if the infringed process relates to a new product, the burden of proof will rest with the defendant.
Submission of description of designs
Submission of the description of the industrial design during the prosecution period will be optional. The description of designs need no longer be filed for prosecution purposes and the information provided in the description will not affect the scope of protection.
Examination for novelty
Designs which are not novel will be refused ex officio. The so-called 'examination of novelty' stage is expected to be introduced within the formal examination phase of a design application.
Invisible parts of complex product
The draft IP Law explicitly states that only visible parts of a complex product shall be protected, provided that the visible parts meet novelty and individual character criteria.
Spare parts of complex product
According to the existing law, three years after a design has first been made available to the public the owner of the registered design cannot assert its rights regarding a visible part of a complex product, provided that the visible part is used for repairs and is not deceptive as to the source of origin.
The draft law, while maintaining this provision, has introduced a new derogation by stating that the three-year period will not apply if the protected spare part design is mentioned among the list of "equivalent parts" issued by the Ministry of Science, Industry and Technology.
Shorter opposition period
The post-grant opposition period of six months has been shortened to three months. This will reduce the total registration time to less than a year.
Non-registered industrial design rights
A design will be protected as a non-registered design right only if the design was first made available to the public in Turkey. The protection term is three years from the date when the design was first made available to the public.
Enforcement of non-registered designs
Designs which are disclosed to the public in Turkey for the first time will be protected as non-registered designs for three years from the date of first disclosure. The rights derived from design protection can be used for non-registered designs to prevent third parties use of identical or similar of a non-registered design.
Changes applicable to both patents and industrial designs
International exhaustion of rights
The draft law introduces the international exhaustion of rights principle to replace the existing national exhaustion principle.
Registered IP right no longer valid defence against infringement claims
The courts have held that trademark and industrial design rights which have been successfully registered with the TPI constitute a legitimate right against an infringement claim unless the registered right is cancelled and removed from the register. This case law delayed (or even caused the rejection of) preliminary and permanent injunction requests until the cancellation of the infringer's trademark or design right. The draft IP Law aims to codify a common provision by which registered trademarks, patents and industrial design registration rights do not constitute a legitimate defence against an infringement claim brought by the owner of the earlier IP right. The provision will require an intensive clearance search – even where registration exists – before the use of an IP right.
Criminal provision
While the draft IP Law introduces criminal provisions for trademark infringements, there are no criminal provisions concerning patents or industrial design.
For further information on this topic please contact Okan Çan or Nazli Korkut at Deris IP Attorneys by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris website can be accessed at www.deris.com.tr.
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