In 2014 the Istanbul IP Court decided that second medical use patents granted before 13 December 2007 are not patentable in respect of Article 52(4) of the European Patent Convention (EPC) 1973. The court grounded its decision on the fact that Article 52(4) of the EPC 1973 does not explicitly mention the patentability of second (and further) use patents. The court further stated that the revision of the EPC in 2000 – which added that a specific use in any method referred to in Article 53(c) of the EPC is patentable, provided that such use is not comprised in the state of the art – is an indicator of the fact that the EPC 1973 does not cover the protection of second medical use patents.
The patent holder appealed this decision before the Supreme Court. The Supreme Court overturned the first-instance decision by clearly stating that second medical use patents were not exempt from patentability and that the first-instance court should evaluate whether the patent in dispute is novel and involves an inventive step.
The first-instance court insisted on its previous ruling and further added that EPC member countries are not bound by the Enlarged Board of Appeal decisions which are referenced in the articles of the EPC 1973.
Articles 52 and 54 of the EPC 1973 reference Enlarged Board of Appeal decision G5/83. In the G5/83 decision, it was decided that the use of a known substance or composition for the manufacture of a medicament for a specific new and inventive therapeutic application is patentable.(1)
The first-instance court decision is now waiting to be evaluated by the General Civil Chamber of the Supreme Court.
On 29 January 2000 Turkey ratified the EPC 1973 without any reservations. The EPC 1973 and the decisions of the Enlarged Board of Appeal were published together, in their entirety, in the Turkish Official Gazette.(2) Parliament ratified the EPC 1973, together with the "Index of Decisions and Opinions of the Enlarged Board of Appeal Published in the Official Journal of the EPO". Enlarged Board of Appeal decision G5/83 was listed in this index as well. The fact that Parliament acknowledged and voted for the EPC 1973 together with the decisions of the Enlarged Board of Appeal without reservations renders unquestionable the will of Parliament to afford protection to patents covering second and further medical uses based on the international legislation to which Turkey is a signatory and which has thus become national law.(3)
Second medical use patents and IP code
On 10 January 2017 the Industrial Property Code 6769 ('IP code') took effect. This introduced many changes, including the patentability of second medical use patents.
Article 82 of the IP code stipulates patentable inventions and exceptions to patentability. Paragraph 6 of this article states that products – particularly, substances and compositions used in any therapeutic methods, including diagnostic methods and surgical methods to be applied on human or animal bodies – are patentable. Thus, the law in force uses the same wording as that in Article 53(c) of the EPC 2000.
Even though there is no explicit provision for the protection of second (and further) medical use inventions, as in Article 54(5) of the EPC 2000, there are no provisions in the IP code which exclude such inventions from being patentable.
TürkPatent practice regarding second medical use patents
Second medical use patents have been accepted as patentable by the Turkish patent office ('TürkPatent') even at the time of Decree Law 551 pertaining to the protection of patent rights.
TürkPatent has always accepted the validation of international second medical use patents designated to Turkey, regardless of whether they are granted before 13 December 2007. TürkPatent has also accepted national filings which cover second medical use inventions.
TürkPatent continues its practice of accepting second medical use patents and treats them in accordance with Article 82 of the IP code.
In our opinion, the General Civil Chamber of the Supreme Court will acknowledge the will of Parliament to include Enlarged Board of Appeal decisions. Therefore, the EPC 1973 will be implemented together with reference decisions and second medical use patents should be protected.
Since there are no exclusions to the protection of second medical use patents in the IP code, such inventions should be protected in Turkey, provided that they are novel and include an inventive step.
Endnotes
(1) Enlarged Board of Appeal decision G5/83, 5 December 1984.
(2) For further information please see "Protection Of Second Medical Use Patents In Turkey".
(3) See (2).
