Recent amendments to patent legislation in Turkey

May 2013 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

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Given the increasing importance of intellectual property to the modern economic model, and the economic development that has occurred in Turkey, the current legislation often fails to satisfy business needs. Therefore, a new legislation is required to regulate industrial rights which are being used as a significant competitive tool.

Accordingly, a new law was drafted and has been waiting to enter into force for years. In the meantime, a recent amendment to Turkish intellectual property legislation was made by the Draft Law on Making Amendments on the Decree Law Pertaining to the Protection of Patent Rights and Some Laws and Some Decree Laws (referred to as ‘Draft Law’), and recently sent to the Presidency of the Grand National Assembly of Turkey. The Draft Law, which will make some amendments to several decree laws, makes the most significant amendments on procedures and principles in Decree Law No 551 Pertaining to the Protection of Patent Rights (referred to as ‘Decree Law’).

According to the Decree Law, the inventions of university staff were considered to be free inventions. The Draft Law makes an amendment in the article regarding inventions made by university staff and applies ‘employee’s inventions’ regulations to university staff inventions. Accordingly, in the case of an application from a university, the university will be the owner of the rights and if the intellectual product is the result of a publicly funded R&D, the ownership will be divided with one-third assigned to the academic personnel and the remaining two-thirds owned by the university. The Minister of Science, Industry and Technology Nihat Ergün expects to see a significant increase in university staff inventions following the amendment. He also expects an increase in licence income through the commercialisation of those inventions.

Another important amendment affects the patent system. There are two types of patent in the Turkish patent system: one with an examination which provides 20 years of protection and another without examination which provides seven years of protection. According to the Decree Law, an applicant must choose either of patent system within three months from the notification of the State-of-the-Art Search Report. If the applicant fails to choose the type of patent within the three-month period, the patent application is considered a patent without examination. The Draft Law makes a significant amendment to this article, stating that the application is considered to be withdrawn if the applicant does not choose the type of patent within the three-month period.

The Draft Law makes an amendment regarding challenges to patent applications. According to the Decree Law, third parties may file challenges against a patent application by putting forward reasons why a patent fails to comply with patentability requirements – including a lack of novelty or inventive activity/step or the inadequacy of the description – within six months following the publication of the State-of-the-Art Search Report. However, the Decree Law introduces an opposition process after the publication of the grant of patent. Accordingly, third parties may file a challenge against a patent claiming non-compliance with patentability requirements, inadequacy of the description, or exceeding the initial version of the patent application.

One of the most important amendments to the Draft Law concerns the penalties related to patents, as the related articles were cancelled by the Constitutional Court on the grounds that crimes and penalties should be regulated by the law. The Draft Law states that the person who produces goods or uses a patented method while producing the good by means of intentional infringement of the rights arising from a patent of utility model shall be sentenced to a punitive fine between TRY 50,000 and TRY 1m. Since there has been no regulation of criminal issues surrounding patent rights, and thus inventors have been suffering from a lack of criminal provisions, inventors will welcome this amendment, although it cannot relieve their damages prior to the amendment.

It is clear that there are several revolutionary amendments which will improve the Turkish patent system. However, it is still unclear when the Draft Law on Patent and Utility Model will enter into force, or whether it will ever enter into force.

Riza Ferhan Cagirgan is a partner and Basak Guzel is an associate at Gur Law & IP Firm. Mr Cagirgan can be contacted on +90 212 325 9020 or by email: riza@gurlaw.com. Ms Guzel can be contacted on +90 530 222 49 47 or by email: basakg@gurlaw.com.

Riza Ferhan Cagirgan and Basak Guzel

Gur Law & IP Firm