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06 April 2020
In a landmark decision, a first-instance court recently ruled on:
The introduction of the re-establishment of rights to the Industrial Property Code 6769 (IP Code), which came into force on 10 January 2017 and further harmonises Turkish IP law with the European Patent Convention (EPC), is welcomed. Previously, such rights were inadmissible as a result of their omission from the now repealed Decree-Law 551 on Patents and Utility Models.
In fact, Article 107/2 of the IP Code mirrors Article 122 of the EPC. However, Turkish Patent and Trademark Office (TURKPATENT) practice remains unsettled. For instance, the validation of European patents that were not filed within three months of their mention of grant being published are awaiting TURKPATENT'S decision for re-establishment.
A request for re-establishment was submitted to TURKPATENT by a patentee in a recent case where a European patent validation request was not filed before the TURKPATENT within three months of its mention of grant being published and no request for extension of term for submitting the Turkish translation was filed within the same period. The patentee provided evidence that due care had been taken to file the validation within the one-year time frame from the end of the period that has not been complied with.
The TURKPATENT Re-examination and Evaluation Board refused to consider the re-establishment request and rejected the objection as to the cancellation of the administrative decision refusing the validation request on the grounds that the acceptance of a European patent as a national patent granted in Turkey is possible only if the necessary proceedings are fulfilled within the legal time frames from the date of its mention of grant being published.
Based on the fact that, in this particular case, the Turkish translation of the European patent specification had not been filed before TURKPATENT within three months of its mention of grant being published and no term extension request had been filed within the same period, said European patent was not deemed as a validly filed national application and a request of re-establishment was not justified.
The board's refusal begs the question of whether an international application can be deemed a national application. Further, this decision is not in line with the EPC provisions under which a European patent application which has been accorded a date of filing will be equivalent to a regular national filing in the designated contracting states. The provisions applied by the board violate the Constitution, which recognises the hierarchy of norms according to which international law prevails over national law, which must be aligned with ratified international conventions. In this sense, as Turkey has been a signatory of the EPC since 1 November 2000, the international norm on re-establishment predates the relevant provision in the IP Code.
A court action was instituted against the TURKPATENT Re-examination and Evaluation Board's refusal before the specialised Courts of Industrial and Intellectual Property Rights in Ankara. Considering the absence of jurisprudence on the matter, the first-instance court appointed an expert panel, which included a European patent attorney, to evaluate the board's decision in view of the EPC and TURKPATENT practice.
Finding the board's evaluation incomplete as it contained no reference to international law, the expert panel deemed the legal grounds for the request for re-establishment to have been met.
Based on the panel's report, the first-instance court decided in favour of the patentee and cancelled the board's decision. The court referred to the legal superiority of the EPC (particularly Articles 64, 66 and 67) and echoed the panel's findings that the board's evaluation had been incomplete and contained no references to international law which would recognise a European patent application as a validly filed national application.
The decision is under appeal.
It will be interesting to see how TURKPATENT reacts to the application of this landmark decision in pending cases seeking the re-establishment of a European patent where a Turkish translation has been filed late. The main question is whether this decision will apply only to the case at hand or whether TURKPATENT will change its current stance and apply the first-instance court's findings to other similar cases.
In the past, court decisions on legal points which were not shared by TURKPATENT served only the cases concerned and were not applied to other similar cases. Therefore, every other case on the same practice and legal points had to be appealed before the courts (including challenges to board refusals to consider requests of re-establishment).
Depending on the final decision in the case at hand, it is hoped that TURKPATENT will change its stance and practice on the re-establishment of rights as a remedy for requesting European patent validation.
For further information on this topic please contact Elisavet Yakovidis Çinlemez at Deriş Patents and Trademarks Agency by telephone (+90 212 252 6122) or email (firstname.lastname@example.org). The Deriş Patents and Trademarks Agency website can be accessed at www.deris.com.tr.
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