|
Frequently Asked Questions: Revised January 2005
GENERAL
APPLICATION
OPPOSITION
LITIGATION
USE REQUIREMENT
What is the legal basis for patent protection in Turkey? The current law is teh Decree-Law no. 551 in force as from June 27, 1995 pertaining to the protection of patents and utility models in Turkey. The transitional Article 1 provides that hte patent application filed prior to the entry into force of the new Decree-Law will be prosecuted according to the provisions of the former Patent Act. The Implementing Regulation for this Decree-Law came into force on November 5, 1995 and amended on December 6, 1998 following their publication in the Official Journal of same dates. What are the international agreements regarding patents which Turkey is a member of? TURKEY has been a signatory of the PARIS CONVENTION, (1934) London Text until the decision of the Council of Ministers dated July 29, 1994 and published in the Official Gazette of September 23, 1994 with which TURKEY has become a signatory of the (1967) Stockholm Text which fully applies with effect as from February 1, 1995. Therefore, the priority term of 12 months applies for patents and utility models. TURKEY has become a signatory and party to the PATENT COOPERATION TREATY on July 7, 1995 as signed in Washington on June 19, 1970 and as amended on October 2, 1979 and on February 3, 1984. PCT has started being applied for Turkey as from January 1, 1996. TURKEY also has become a signatory of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms as of August 22, 1997. As from the publication on January 29, 2000 in the Official Gazette of the Law No. 4504 dated January 27, 2000 TURKEY has become a signatory and party to the European Patent Convention. TURKEY being presently a signatory of GATT, the provisions of the TRIPS AGREEMENT apply to this country. Turkey has availed itself to Articles 65 and 70/8 of the GATT/TRIPS Agreement in that under Transitional Article 4 of the Decree-Law No. 551, patent protection in respect of inventions pertaining to pharmaceutical and veterinary products per se and their process of manufacturing has effect as from January 1, 1999. However, Turkey has started accepting since January 1995 the filing of such black-box applications which were prosecuted along similar procedural phases applying to other applications for patent filed in this country. The only difference being that all such black-box applications having reached the stage of grant were upheld until January 1, 1999, the date after which the Letter’s Patent were issued. What are non-patentable subject matter and inventions according to Turkish patent law?
The provision under the paragraph one, subparagraph (e) of this present Article, shall apply neither to the products and compositions (per se) used in connection with these methods nor to their process of manufacturing. Patent shall not be granted for inventions in respect of following subject matter.
Who is entitled to obtain patent and/or utility model registration in Turkey? The protection is available to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or to the persons entitled to file applications, under the provisions of the Paris Convention. Natural or legal persons other than those referred to in the first paragraph of this Article, who are nationals of states which accord legal or de facto protection to the nationals of the Republic of Turkey shall enjoy, according to the reciprocity principle, patent and/or utility model protection in Turkey. (Article 2 of the Decree-Law no. 551). What type of protection is available for inventions and what is the protection period?
There are three types of protection namely:
It is possible to convert a patent, irrespective of its term of protection, into a utility model and vice-versa. Processes and products obtained by said processes as well as chemical products cannot be subject of utility model protection according to article 155 of the Decree-Law no. 551. Is it possible to file under the same patent application method of claims and apparatus/product claims? Yes, provided that the unity of the invention does not suffer. In the negative, the Turkish Patent Institute (T.P.I.) will request the filing of divisional application(s) for each subject matter. Is there any implementation for Secret Patents? The Decree-Law No. 551 provides for the Secret Patents under Part VIII - Articles 125 to 128. According to Article 125, paragraph 1, “The contents of a patent application shall be kept secret for a period of two months as from the date of filing of the application unless the Institute decides to disclose same earlier.” According to Article 125, paragraph 2, “The Institute may extend the period during which the application for patent is kept under secrecy up to five months as from the date of filing of the application if it comes to consider that the invention, subject-matter of the application is of importance for national defense”. According to paragraph 4, of Article 125, “When national defense interests are of question the Ministry of National Defense, by request made (in writing) before the expiry of the said period of 5 months, may ask the Institute that the patent application be prosecuted under secrecy and the applicant be kept informed of such situation”. According to paragraph 3, of Article 125, “The Ministry of Defense has authority to examine, beforehand, all applications under the condition to respect the obligation to secrecy.” According to paragraph 6 and last of Article 125, “The Ministry of National Defense, upon the request of the applicant or the patentee may allow that the subject of the application or of the patent be used in part or in whole under the conditions to be laid down by the Ministry of National Defense”. What is the term of a patent (application) until the first maintenance fees is due? Maintenance fees are paid yearly for patent applications and patents starting from the first anniversary of the patent application. The due dates for the payment of maintenance fees are calculated as of the application date. With regard to the annuities of national phase applications under PCT Chapter I or II, annuities are paid yearly by the anniversary of the international filing date and the 2nd annuities are paid during national phase entry as accumulated annuities. As to EPC applications, annuities are paid on the anniversary of date of filing. 6 months grace period is available from due date. What is the language of the description? What is the time period to file the Turkish translation of the description and claims? The description and claim(s) may be filed in English, French and German simultaneously with the application of a national and national phase of PCT or EPC patent. A term of one month and a further period of 3 months shall be given for translating national and PCT application descriptions into Turkish and filing the Turkish translation before the Institute or an authority designated by it without the need to extend (to the applicant) any further notice to this effect. For the filing of the corresponding Turkish translation, the fee set forth in the Regulation shall be paid. In addition to this, a further period of 3 months has been given for the filing of the Turkish translation for which a further fee is due. Is there any late filing for national phase entry of the international applications under PCT? According to Article 5, paragraph 4 of the amended Implementing Regulations dated December 6, 1998, after expiration of the 20- or 30-month periods for entering the national phase in Turkey, 3-months extension period is provided with a 50% fine of the official filing fee. Must the claim of priority be made at the time of filing? Priority should be claimed either at the time of filing or within two months as from the date of filing. What is the time period or submitting the priority document ? The priority shall be deemed not to have been claimed if the priority document (attesting same) is not submitted within three months as from the date of filing of the application (in Turkey). This deadline cannot be extended. Is Power of Attorney required for filing patent/utility model applications? No. What kind of information is required during the filing of national patent/utility model application?
In so far as the relation between the applicant and the inventor(s) is concerned, according to Article 44 of the new Decree-Law No. 551, it is necessary to indicate in the filing petition:
In the filing petition form prepared by T.P.I. the name(s), address(es) and nationality(ies) of the inventor(s) must be cited by also indicating the (legal) instruments/means through which the applicant declares to have the right to apply for a patent in case he is not the inventor. According to the Decree-Law No. 551 and the resulting current Administrative practice, this information pertaining to the (legal) relation between the inventor(s) and the applicant as to the ownership of the invention and to the right to apply for a patent, is to be supplied on a declaratory basis. At present, no documentary evidence is required to be submitted in support of the declaration (to be) effected in this regard. According to the provisions of Article 44 of the new Decree-Law, in case the name(s) of the inventor(s) and the (legal) instruments/means through which the applicant declares to have the right to apply have been omitted to be indicated in the filing petition, the formal examination of the application will not be initiated, for as long as this declaration/information remains outstanding. What are the Documents Required to Support a Patent Application In Turkey? The documents/information needed to support a patent application in Turkey are indicated in the following link. What are the requirements for validation of an EP registration in Turkey? National validation of European Patents in Turkey is based on Regulations implementing the Convention on the Grant of European Patents in Turkey dated 9 January 2001. Provisional protection under Article 67 EPC is available for which translation of the claims in Turkish and payment of a special fee are necessary. The provisional protection arises when the translation of the claims is made available to the public via the Official Patent Bulletin of the Turkish Patent Institute.
The following data must be provided with the translation of the claims:
In order to validate a European patent in Turkey, the Turkish translation of the European Patent Specification must be filed within 3 months after the date on which the mention of the grant or the decision to maintain the patent as amended is published in the European Patent Bulletin. Extension of 3 months by paying a surcharge is available.
The following data must be provided with the translation of the European Patent Specification :
How is the search stage conducted? Irrespective of the term of protection of 7 or 20 years, the State-of-the-Art (Standard) Search is to be conducted for patent applications which otherwise shall be deemed to have been withdrawn (Article 56 parag. 4) in case, the request for (Standard) Search is not filed within 15 months from the date of filing of the application in Turkey or, from the date of the priority, if any, claimed in the application and, in case the (Standard) Search fee is not duly paid within the subsequent three months. It is important to note that both of these deadlines cannot be extended. How is the search stage conducted for PCT national phase applications? PCT applications entering into national phase in Turkey are not subject to this search procedure since International Search Reports are readily accepted by the T.P.I. What are the conditions and fees for filing a search request? As the T.P.I. does not have an in-house searching unit, it will see to have such a report established by one of the search authorities conducting search on behalf of the TPI under special protocols. The list of said authorities is available in document SEARCH-EXAMINATION_AUTHORITIES_2007.pdf together with the respective fees. The applicant is to select as of its preference the search authority, which is to conduct the search on behalf of the TPI. The fee for establishing the (Standard) Search Report requested by the selected search authority will have to be paid to T.P.I. as well as the handling fee of the TPI simultaneously with the filing of the request for (Standard) Search, in order to simplify and accelerate the prosecution of the application. However, if so wished, the fee for establishing the (Standard) Search Report can be paid within the three months subsequent to the filing of the request for conducting the (Standard) Search in accordance with Article 28, parag. 1 of the implementing regulation of November 5, 1995. It is important to note that this deadline cannot be extended. T.P.I. will settle directly with the selected search authority the search fee that said authority will be charging for conducting the search and establishing the State-of-the-Art (Standard) Search Report. Does the Turkish Patent Institute accept a corresponding search report? Yes, transitional Article 4, paragraph 2 of the implementing regulation which was amended on December 6, 1998, provides that "the (Standard) Search Reports established by the Search Authorities designated under the Patent Cooperation Treaty or Search Authorities conducting the search on behalf of the TPI under special protocols on the (corresponding) patent application(s), the priority of which has/have been claimed in the application filed in Turkey, will be accepted by T.P.I. for the prosecution of the Turkish application." Namely, where any such (Standard) Search Report obtained from anyone of the PCT Search Authorities or Search Authorities working for the TPI exists, it will not be necessary to additionally refer the application filed in Turkey to the State-of-the-Art Search. In other words, in case a corresponding search report established by the European, Russian, Chinese, Australian, Austrian, U.S., Spanish, Japanese, Swedish or Korean Patent Offices for a corresponding patent application exists, they are accepted in Turkey under their capacity as International Search Authorities. Additionally, a corresponding search report established by the Danish Patent Office is also accepted under its capacity as a search authority, conducting search on behalf of the TPI under special protocols. When should a corresponding search report be submitted before the T.P.I.? It is necessary to file the request for (Standard) Search within the above referred period of 15 months by simultaneously submitting in the attachment thereof the copy of the (Standard) Search Report established by anyone of the above mentioned Search Authorities, on the corresponding priority application(s). What should be done if the corresponding search report has not yet been established? In cases, where the (Standard) Search Report on the corresponding priority applications is not available at the date when the request for (Standard) Search comes up for filing within the above referred period of 15 months, such request will still have to be filed within the set time period of 15 months by indicating that the corresponding (Standard) Search Report is not available as yet and will be submitted at a later date upon its issuance, by the respective search Authority. In cases, where the request for (Standard) Search is filed without the corresponding (Standard) Search Report, the respective fee will not have to be paid to T.P.I. simultaneously with the filing of the request for (Standard) Search, but when filing, at a later date, the (Standard) Search Report issued by the respective Search Authority. (Transitional Article 4, parag. 3 of the implementing regulation of November 5, 1995). Can a corresponding search report be submitted for non-convention applications? No, the T.P.I. does not accept corresponding search report when there is no claim of priority. Should a search request be filed for utility model applications? It is not mandatory to conduct a State-of-the-Art (Standard) Search for Utility Models. According to Article 160 last parag., such (Standard) Search can be carried out upon request of the applicant or registrant of the utility model. When is the application published? The application is published after the elapsing of a period of 18 months from the date of filing of the application in Turkey or from the date of priority, if any, claimed in the application. The application is published following the completion of the formal examination and subsequent to the filing of the request for the State-of-the-Art (Standard) Search (Article 55, parag. 1). If not published earlier, the application is published together with the State-of-the-Art (Standard) Search Report according to Article 57, last parag. When and how should the decision between patent systems with or without substantive examination made? According to Article 59, the applicant for a patent disposes of 3 months from the notification to him of the State-of-the-Art (Standard) Search Report for deciding which of the types of patent with or without (substantive) examination he wishes to choose. It is after the elapsing of this time period of 3 months during which the applicant is to determine the type of patent he wishes to choose, that the State-of-the-Art (Standard) Search Report is published in the Official Patent Bulletin wherein it is specified that the subject application concerns a patent with or without (substantive) examination. (Article 57, parag. 5 and 6). Where the applicant does not respond within this period of 3 months and determine the type of patent he wishes to choose, the patent application is considered and further prosecuted as a short term patent of 7 years without (substantive) examination. (Article 59, last sentence). When and how should the decision between patent systems with or without substantive examination made for PCT national phase applications? Applications entering into national phase in Turkey under PCT Chapter II are automatically prosecuted according to patent system with (substantive) examination whereas for applications entering into national phase in Turkey under PCT Chapter I, applicant has the option to choose either of the patent systems as indicated above. How does a patent application prosecuted under patent system without substantive examination proceeds to grant? For the short-term protection of 7 years, after end of the opposition period, the applicant for a patent without (substantive) examination is free to take or not into consideration the observations/arguments put forward by the opponent(s). The applicant can respond to the objection/observation of the opponent(s) and, if he so wishes, can amend the claim(s) in consideration thereof within 3 months from the notification of the opposition. Where the applicant has not filed a response to the opposition/objection with or without amending the claim(s) within this period of 3 months, T.P.I. proceeds further by deciding to grant the "patent without (substantive) examination" for a term of 7 years from the date of filing of the application in Turkey. Can a patent without substantive examination be converted to a patent with substantive examination? Yes, a "patent without (substantive) examination" of 7 years can be converted into a "patent with substantive examination" thereby extending the period of protection to 20 years provided that the request for substantive examination is filed within 7 years, at the latest, from the date of filing of the application in Turkey. Such request for (substantive) examination can be filed either by the patentee or by third persons. The examination fee is to be bourn by the party namely the patentee or third persons having filed the said request for (substantive) examination (Article 60 parag. 7). When and how should the substantive examination request be filed for patent applications prosecuted under patent system with substantive examination? According to Article 62, parag. 3, in case, the applicant opts for a patent with (substantive) examination, the request for substantive examination is to be filed and the Examination Fee is to be paid by the applicant within a period of 6 months following the publication in the Official Patent Bulletin of the State-of-the-Art (Standard) Search Report. As the T.P.I. does not have an in-house examining unit, the examination of Turkish patent applications are conducted by foreign authorities on behalf of the T.P.I. under special protocols. The fee for Substantive Examination varies according to the selected examination authority as shown LINK (SEARCH/EXAMINATION AUTHORITIES 2007) and in addition to this, a handling fee of the TPI is due. These fees are to be paid to T.P.I. at any time within the period of 6 months mentioned under point (7/9) according to Article 32 of the implementing regulation of November 5, 1995. T.P.I. will settle directly with the selected Examination Authority, the fee such authority will charge for the substantive examination. How is the examination stage conducted?
T.P.I. notifies the results of the first examination to the applicant. In case this (substantive) examination report holds objections on patentability, the applicant is to file a response within the subsequent 6 months simultaneously with a request for second examination. In case the second examination also involves objections, the T.P.I. notifies the applicant of its decision by recognizing him the possibility of a further reply within the subsequent 3 months in which period a third (final) examination should also be requested. The T.P.I. reaches its final decision in consideration of the third (final) examination report. It should be noted that the second or third examination fees are paid simultaneously with filing of the related request. The available second/third examination authorities and their fees as well as their special conditions can be found in the link :
How is the examination stage conducted for PCT national phase applications? For applications entering into national phase under PCT Chapter II, the International Preliminary Examination Report (IPER) is accepted as the first (substantive) examination report by the T.P.I. Accordingly, in case this report recognizes patentability for the entire claim set, the application is immediately granted. On the other hand, in case there are any objections in IPER, second and third examination procedures are to be applied. What are the conditions for choosing the Danish Patent Office as search or examination authority? Applications NOT under IPC C12N, C12P, C12Q, G06, H04B, H04J, H04L, H04Q are accepted by Danish Patent Office for search and examination. English or German language specification and comments, if any, are required. What are the conditions for choosing the Russian Patent Office as search or examination authority? All applications with English language specification and comments, if any, are accepted by the Russian Patent Office for search and examination. What are the conditions for choosing the European Patent Office as search or examination authority? All applications with English, French or German language specification and comments, if any, are accepted by the European Patent Office for SEARCH. Examination is NOT conducted by the European Patent Office on behalf of the T.P.I. What are the conditions for choosing the Austrian Patent Office as search or examination authority? Austrian Patent Office does not act as a search and examination authority for the T.P.I. any more but has accepted to complete the examination stages for those Turkish patent applications for which it has previously established a search or first examination report under the former protocol. What are the conditions for choosing the Swedish Patent Office as search or examination authority?
Detailed explanations may be found in the link :
Is there an opposition period for patent applications? Yes, following the publication of the Standard Search Report in the Official Patent Bulletin, third parties can raise opposition against the patent application within the subsequent 6 months. (Article 60, parag.1 and Article 62, parag. 2). Is there an opposition period for utility model applications? Yes, the period of opposition is 3 months for the utility model application following the publication of the application in the Patent Bulletin. (Article 161, parag. 1). How are the oppositions handled for patent applications with substantive examination? According to Article 62, parag. 2, third persons can raise opposition against the patentability of the application within 6 months from the publication of the State-of-the-Art (Standard) Search Report. The applicant disposes of 3 months, with a possible extension of 3 additional months, subsequent to the 6 months opposition period for responding to the opposition(s) notified immediately to him by T.P.I. according to Article 62, parag. 4. T.P.I. initiates the (substantive) examination after the elapsing of the period of response of the applicant (3 months + 3 months) as provided in Article 62, parag. 4. According to Article 62, parag. 5, the fact that the applicant has not responded to the opposition(s) within the set period of response will not stop the initiation of the (substantive) examination. Is there any deadline for objecting the formal deficiencies after grant of a patent? According to Articles 70 and 71 of the Decree-Law, third persons may object before T.P.I. to the registration of the patent on grounds of formal deficiencies, in violation of the (formal) requirements as provided in Articles 42 to 63 (except for Article 45 concerning the unity of invention) and no deadline is provided in Article 70 for objecting to Turkish Patent Institute on such grounds. However, according to the General Administrative Procedural Law, a deadline of 60 days should be applicable for objecting before T.P.I. against an administrative decision on the above grounds as the Decree-Law No. 551 contains no provision on the time period within which objections on such grounds are to be raised. There is no need to have opposed or filed objections against application during the opposition/observation proceedings for objecting before the TPI against formal deficiencies according to Articles 70 and 71. Which courts are competent for the institution of the actions concerning intellectual and industrial rights in Turkey? According to Article 146, paragraphs 1 and 3, in all court actions (to be) instituted in accordance of the Decree-Law No. 551 and against all decisions of the T.P.I. in implementing the provisions of the Decree-Law No. 551, the competent courts shall be the specialized courts set-up by the Ministry of Justice. Both civil and criminal actions regarding Intellectual and Industrial property matters are handled by the “Civil Court of Intellectual and Industrial Property and Criminal Court of Intellectual and Industrial Property” established as specialized courts. Said courts are presently only established in Istanbul, Ankara and Ýzmir. Currently for the jurisdictions other than Istanbul, Ankara and Ýzmir, in the jurisdictions having more than one penal and/or commercial court, according to the decision of the Supreme Council of Judges and Prosecutors, the 3rd Penal Court hears the penal actions for all Intellectual and Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction. These Courts are competent also for all actions to be instituted versus T.P.I by third persons negatively affected or having suffered damage by the decisions of the T.P.I in any industrial property matter. Is suspension of release procedure applicable before the Turkish Customs? With the enactment of the package of new Industrial Property Legislation under various Decree-Laws, of which No. 551 concerns Patents and Utility Models, Article 57 has been added to the Customs Act No. 4458 to permit, upon complaint, under the suspension of release procedure the seizure/withholding, by the customs, of goods infringing intellectual and/or industrial property rights, and among them patents and utility models under protection in Turkey. The withholding is lifted and the customs formalities proceed further unless a court action for patent infringement is duly instituted or an interlocutory injunction is ordered by the court within 10 days from the date of the withholding by the customs. In this regard, the customs authorities can seize counterfeit goods during the importation or exportation. The main infrigement action is to be instituted before the court within 10 days from the notfication of seizure by the customs. What are the actions that may be taken to satisfy the working requirement of a Turkish patent registration ?
- Filing certificate of use or importation documents
When a Certifcate of Use has to be filed with the TPI? Please note for your information that in case of the production in Turkey of the patented product or of the product obtained via the patented process, it will be sufficient to meet the working requirement of a patent by filing the Certificate of Use with the TPI. The said Certificate is to be executed and sealed by the Turkish Chamber of Commerce and Industry of which the firm using the subject patent in Turkey is a member or by any other relevant authority but only upon examination of the production premises in Turkey. The original form prepared in Turkish language has to be filed with the relevant Turkish Chamber of Commerce and Industry for certification purposes. In case the patent is put into use not by the patentee but by any other party upon authorization/license of the patentee, the Certificate of Use shall be also accompanied with the deed of authorization/license and the same should be executed by both parties and sealed. It is important to note that the deed of authorization/license to use the patent shall additionally be recorded on Patent Register if it is to have effect against third parties of goof faith. What documents are needed for the recordal of the importation documents on the Patent Register as use of a patent?
The Turkish Patent Institute records the importation documents as use of the patented product or of the product obtained via the patented process only upon receipt of sufficient documentation which is constituted as follows:
Do the use requirements have to be repeated every year? Kindly be informed that you have to apply before the Turkish Patent Institute for the publication of an offer for licensing, for the recordal of the certificate of use, of the importation documents, and of the declaration of the legal excuse only one time for meeting the working requirement of a patented product and/or process. By following one of the above proceeding, you comply with the use requirements for once and ever, thus these formalities are not required every year. How the withdrawal of the publication an offer for licensing affects the use-requirements? It is to be noted that when an offer for licensing is withdrawn, the working requirements of the patent become once again due. Precisely, when the withdrawal of the offer for licensing is made, the patentee has to evidence the use of the patent by others means provided in the Decree Law no. 551, i.e. filing of the importation documents, effective use of the patent by filing the Certificate of use, etc. The patentee can withdraw, at any time, his offer for licensing provided that no person has demanded the patentee for the grant of a license (to use the invention). Withdrawal of the offer takes effect from the date of filing before the Institute of the petition for the withdrawal of same. What are the possible consequences of not fulfilling the working requirements? The minimal specific action a patentee would need to take in order to fulfil the working requirements is the filling of a request with the TPE for the publication of an offer for licensing in the Official Patent Bulletin. In the absence of the prosecution of any course of action regarding the working requirements, it is to be noted that the patent cannot ex-officio revoked by the Turkish Patent Institute on grounds of non-use or failing to meet the working requirement of a patented product and/or process. The patent is not abandoned or invalided due to the fact that no working requirement is met in the prescribed deadline of three years as from the publication date of the grant decision. The possible consequence of not fulfilling the working requirement either by filling a Certificate of Use in case of effective use and /or importation documents in case of importation of the patented product/process into Turkey, by filing a Legal Excuse for non-use or filing a request for the publication of an offer for licensing in case of non-use, would be a compulsory licensing which is however a procedure not actuated automatically by the T.P.I. but the license being granted by courts upon request of third parties. What are the legal basis for the request of a compulsory license? A compulsory license can be requested in accordance with the Article 99 of the Decree-Law No. 551 pertaining to the protection of the patent and utility model in Turkey: “Compulsory license is (to be) granted where no offer for licensing has been made and where any one of the following situations/conditions materializes: Failure to put to use/work the patented invention in accordance with Article 96; Dependency of subject matter of patents as mentioned in Article 79. On grounds of public interest as mentioned in Article 103”. For the request of a compulsory license by a third party, according to the Article 100 of same Decree-Law “any interested person may after the expiration of the period foreseen in Article 96, request the granting of a compulsory license on the grounds that the patent, at the time of the request, was not put to use or that the delay in the use thereof was not due to justifiable/legitimate reasons or that the use thereof had been suspended during an uninterrupted period of 3 years without justifiable/legitimate reason”. Does the time period of three years for putting the patent into use can be extended? The time period of three years ending within three year as from the publication date of the grant of the patent in the Official Patent Bulletin cannot be extended. On the other hand, after the expiration of the deadline, any application or submission of documents regarding the proof of the use of the patent can be submitted to and will be considered by the Turkish Patent Institute and recorded in the Patent Register. However, the validity of these documents submitted after the expiration of the prescribed deadline, can only be determined by the court in a court action which may be instituted by third parties on the grounds of non - use of the patent within the 3 years period. How does the content of a Declaration of non-use should be formulated in order to be considered as a Legal Excuse by the Turkish Patent Institute? For the filing of a Declaration of Legal Excuse, the Turkish Patent Institute requires the patent holder to indicate the justifiable/legitimate reasons preventing him from putting the patented products in use in Turkey. The legitimate reasons of non – use of the patent shall be explained by the patentee himself in a declaration, which shall be prepared on a company paper bearing the name and the address of the patentee, the signature and seal of an authorized person of the patentee firm and needs to indicate absolutely the registration number of the patent, the title of the invention, and mainly all the technical, economical, legal reasons of non-use of the patent. It is to be noted that according to Article 100 paragraph 2 of the Decree-Law No. 551 on patents all such “technical economical or legal reasons” of “objective nature" developing “beyond the control and will of the patentee” are deemed to be legitimate reasons for not working the patent Such a legal excuse may be evidenced by supporting documents of non-use of the patent as ruled in amended Article 39 of the Implementing Regulation of 6 December 1998. How do the rate and the royalty are calculated in the offer for licensing compared to the compulsory license? In the offer for licensing, the relation between the parties is a contractual license if they agree on the terms and conditions of the license. Consequently the royalty as well as the rate of same are determined between the patentee and licensee. Such a license agreement can only be finalized if the parties agree on the terms of such an agreement. Where the patentee and the candidate licensee cannot agree on the amount of the royalty or other contract terms, the matter is referred to the court. At this stage, the court will decide on the royalty and other terms on the agreement, so far as it is necessary. The license granted on an offer for licensing is a contractual license agreement, whereas the compulsory license as is a procedure not actuated by the TPI, the license is granted by courts upon the request of third parties and in such case, the terms as well, the royalty rate are determined by the court. Does the use requirements of the patent apply also to the utility models? The Decree-Law No. 551 pertaining to the protection of the patents and utility models states that in case any provisions specifically applicable to utility models are absent, the provisions pertaining to patents as set forth in the subject Decree-Law shall apply likewise, for utility model certificates, provided that they are not incompatible with the characteristic of utility model certificates. Therefore, the use requirements have to be fulfilled within the time period of three years as from the publication date of the grant decision of the utility model in the Official Patent Bulletin. |
©2007 Deris Patents and Trademarks Agency Joint-Stock Company. All rights reserved.
Background & Partners
Activity
GENERAL