Patents

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We represent our clients before the Turkish Patent & Trademark Office (TURKPATENT) in filing and prosecution of the national patent filings in Turkey. Patents are granted for a term of 20 years having effect within Turkish territories. Patent term extensions or SPCs are not applicable in Turkey.

1. Filing stage

Once the application is filed, it is required to file a request for search and associated fees need to be paid within 12 months from the filing date. It is also possible to request a combined search & examination within the same term in which case the first communication includes both the search report and examination report.

Possible additional fees:

There are no additional fees, for instance, for excessive number of claims and description pages.

Language of filing:

A national patent application can be filed in any language of the countries which are members of the World Trade Organization (WTO). A translation of the specification in Turkish then needs to be served within 2 months from the filing date.

Minimum Requirements for accordance of a filing date:

Applicants must at least provide the following in order to obtain a filing date provided that formal requirements are met within 2 months after the filing date:

- written request for grant of a patent,

- identification of the applicant or at least an information of contact with the applicant,

- a description or reference to an earlier application.

Requirements of a national patent application:

Applicants must supply the following items in order to meet the basic requirements prescribed by the law:

- Official form for application,

- a description of the invention,

- one or more claims,

- any drawings referred to in the description or claims,

- an abstract,

- payment of the official fees.

2. Examination stage

Turkish PTO applies “examination cycles” if the first examination report contains a negative opinion. Applicant is then invited to respond to the first examination report and pay again the examination fee (second cycle). If the second examination report still contains a negative opinion as to patentability, a third chance, which is actually the last chance, is given to overcome the objections in the negative report (third cycle). If the third examination report does not allow any claim in the claims set, application is eventually refused. If the examination reports reference at least one claim as being patentable, application may proceed to grant based on the allowed claim(s).

3. Grant stage

Once the application is found to be allowable by TURKPATENT, the applicant is informed about decision to grant and said decision is published in the official patent bulletin. Paying a fee for certificate is optional.

4. Annuities

Turkish patent applications are subject to annuity fees from the third and each subsequent year calculated from the filing date of the application. An annuity is due on the same day of the month containing the anniversary of date of filing of the national patent application. If the applicant fails to do so, such annuity may still be paid within an additional term of six months with surcharge.

Failure to pay the renewal fees within the additional 6 months results in loss of rights which can be remedied by paying fee for redress within 2 months after notification of the Turkish PTO. Payment of the fee for redress doesn't need to be supported by any evidence concerning failure of observation of the timelimit.

5. Appeal

Normally decisions of TURKPATENT can be brought into the attention of Board of Re-examination and Evaluation acting as a kind of Board of Appeal. Decisions of this board can be appealed before the Specialized IP Courts in Ankara.

6. Oppositions / Third Party Observations

Post-grant oppositions are available for the granted patents in Turkey. Timelimit for filing an opposition is 6-months from publication of grant in the official bulletin. Otherwise, validity of a patent can be challenged by filing a lawsuit requesting nullity of the concerned patent before the competent courts.

Third party observations can be filed after publication of the application in the official bulletin. However, third parties filing observations cannot be a party to the proceedings.

Utility Models granted in Turkey have the same effect as the patent documents, but their characteristics mainly differ from patents especially within the following points;

• Utility Models confer a protection term of 10-years starting from the filing date unlike the 20-years protection term of the patents.
• Utility Models are treated with a novelty search but are not examined. If the search report is negative, applicant is given at least one opportunity to reply the objections and bring the application into an allowable form.
• Novelty and industrial applicability are sufficient for the grant of a utility model. Inventive step is not required. However, features that do not contribute solution of the technical problem are not considered in assessment of novelty which means that an inventive step is sought up to a certain level.
• Subject matters such as methods/processes and chemical compounds/compositions are excluded from protection.

Annuities

Turkish Utility Model applications are subject to annuites from the third and each subsequent year calculated from the filing date of the application. A renewal fee is due on the same day of the month containing the anniversary of the date of filing of the UM application. If the applicant fails to do so, such renewal may still be paid within an additional term of six months with surcharge.

Failure to pay the renewal fees within the additional 6 months results in loss of rights which can be remedied by paying a fee for redress within 2 months after notification of the Turkish PTO. Payment of the fee for redress doesn't need to be supported by any evidence concerning failure of observation of the timelimit.

Conversion of a patent application to a Utility Model or vice versa

Patent applications can be converted into a utility model application. Likewise a utility model application can be converted to a patent application upon request of the applicant. Conversion from UM to a patent application needs to be filed within 3 months after notification of the search report.

Our firm represents clients before the European Patent Office in filing and prosecution of the European patent applications as well as in post grant opposition proceedings. Grant procedures of European patent applications are governed by the European Patent Convention (EPC), and are also subject to the procedural steps as outlined in a simplified manner within the following scheme.

A European patent confers exclusive rights for a duration of 20-years, with respect to the claimed technology, to the patentee in the EPC contracting states. There are currently 39 member states, namely; Albania (AL), Austria (AT), Belgium (BE), Bulgaria (BG), Switzerland (CH), South Cyprus (CY), Czech Republic (CZ), Germany (DE), Denmark (DK), Estonia (EE), Spain (ES), Finland (FI), France (FR), United Kingdom (GB), Greece (GR), Croatia (HR), Hungary (HU), Ireland (IE), Iceland (IS), Italy (IT), Liechtenstein (LI), Lithuania (LT), Luxembourg (LU), Latvia (LV), Monaco (MC), Montenegro (ME), Macedonia (MK), Malta (MT), Netherlands (NL), Norway (NO), Poland (PL), Portugal (PT), Romania (RO), Serbia (RS), Sweden (SE), Slovenia (Sl), Slovakia (SK), San Marino (SM), and Turkey (TR).

Requirements of a European patent application

Applicant should normally supply the following items in order to meet the basic requirements prescribed by the law (Art. 78 EPC):

• a request for the grant of a European patent,
• a description of the invention,
• one or more claims,
• any drawings referred to in the description or claims,
• an abstract,
• payment of the official fees.

Minimum Requirements for obtaining a filing date

Minimum requirements for recordal of a filing date are outlined below (Rule 40 EPC).

• an indication that a European patent is sought,
• information identifying the applicant or allowing the applicant to be contacted; and
• a description or reference to a previously filed application.

The above acts can be performed by the applicant himself irrespective of his nationality or country of residence. However, an applicant who is not a citizen or resident of an EPC state must be presented by a professional representative after filing the application.

Filing Language

Official languages of the EPO are English, French and German. However, European applications can be filed in any language provided that a translation is filed within two months from the filing date.

Examination stage

Request for examination and payment of the examination fee must be accomplished within 6 months after publication of the application. Applicant must also respond to the Extended European Search Report if such report contains a negative opinion concerning deficiencies in the application.

Grant stage

Fee for grant need to be paid within 4 months after notification of the intention to grant under Rule 71(3) EPC. Also, translation of the claims in two other official languages of the EPO shall be filed within the same period.

Validation stage

A European patent normally takes effect in EPC member states upon a validation procedures which generally involve payment of the prescribed fees and filing of a translation of the specification in an official language of the concerned state within three months after mention of the grant in the European Patent Bulletin. However, some states dispensed with this translation requirement partly or entirely in frame of the London Agreement which aims at reducing the translation costs incurred by the applicant. The states dispensing with translation requirements “entirely” are France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland and United Kingdom. It should be borne in mind that validation terms are generally very strict in the contracting states where a translation is required, and cannot be remedied unless a timely request for extension of time is filed within the prescribed timelimit at the concerned national offices.

Renewal Fees of European patent applications

European patent applications are subject to renewal fees from the third and each subsequent year calculated from the filing date of the application. A renewal fee is due on the last day of the month containing the anniversary of the date of filing of the European patent application. If the applicant fails to do so, such renewal may still be paid within an additional term of six months with surcharge.

Renewal fees falling due before publication of the mention of grant are payable to the EPO. However, applicants should pay attention to the fact that if the due date falls on or after the publication of the mention of the grant, such renewals should then be paid before the national offices where the European patent takes effect.

European patents need to be validated according to Art. 65 EPC in order to take effect in Turkey. The validation process mainly involves payment of the official fees and providing a translation of the specification in Turkish language. It should be borne in mind that the Turkish legislation prescribes that the authentic text is the Turkish translation, and this means that the text in the Turkish language forms basis for any legal procedure based on the concerned patent. There is the exception in revocation proceedings as prescribed in Art. 70(3) EPC which is applied in Turkey. Accordingly, the original text, instead of the Turkish translation forms basis in revocation proceedings if the translation confers a narrower scope. Therefore a correct translation of the patent is of vital importance.

We provide high quality translation services and strictly apply a “double check” procedure. More specifically European patents are translated by a technically qualified translator having background in patents or a patent attorney and then the resulting translation is cross-checked by another patent attorney in order to minimize human errors.

Term of validation

Validation term is strictly 3 months commencing from the date on which mention of the grant of the European patent is published. Once this term expires, there is no way to remedy the expired validation term. An extension of 3 months for supplying the translation is nevertheless available provided that the request for extension is lodged and the prescribed extension fee is paid within the validation term.

Re-validation after limitation/opposition proceedings at the EPO (Art. 99 & 105a EPC)

Translation of the amended form of a European patent after limitation or opposition proceedings needs to be lodged at the Turkish Patent Institute within 3 months from publication of the relevant decision in the European Patent Bulletin. Failure to do so has an ex tunc effect resulting in a loss of rights in Turkey such that the European patent is deemed not to have had an effect from the beginning.

Annuities of European Patents in Turkey

Validated patents are subject to renewal fees. A renewal fee is due on the same day of the month containing the anniversary of the date of filing of the European patent. If the applicant fails to do so, such renewal may still be paid within an additional term of six months with surcharge.

Failure to pay the renewal fees within the additional 6 months results in loss of rights which can be remedied by paying a fee for redress within 2 months after notification of the Turkish PTO. Payment of the fee for redress doesn't need to be supported by any evidence concerning failure of observation of the timelimit.

Obligation to Use

Validated European patents, like all other national patents, are subject to a working requirement in Turkey within a period of 3 years starting from the publication of grant in the official patent bulletin or within 4 years after the filing date whichever expires later, unless the patentee has a valid reason for not to do so (e.g. regulatory issues may take considerable time). For this reason, a declaration of use may be served to the TURKPATENT within the above period.

Such declaration, however is not an obligation, and there is no sanction under the law if the right holder doesn’t use the invention or fails to file a declaration. The only serious consequence is that a compulsory license may be requested by third parties based on this ground, where also a licensing fee may be determined by the court depending on the circumstances. TURKPATENT publishes those patents for which a desclaration of use has not been filed within the normal period.

Many patentees try to circumvent this obligation of the law by filing a licensing proposal under Art 128 of IP Law No:6769 in order block the route of compulsory licensing. This results, however in a more or less similar consequences as the third parties may still request a license based on patentee’s proposal where the patentee is still put into a situation something similar to compulsory licensing, where again the licensing fee is determined by the relevant court (if the parties do not agree on a licensing fee).

PCT applications are filed so that eventually granted patents can be obtained within 153 contacting states of the PCT system. Filing of patent applications following the PCT route has several advantages such as;

• delaying of the costs at least 30 months until the national/regional filings;
• gaining time for commercialization of the invention before national phase entries in the concerned countries;
• obtaining a preliminary report on patentability which may be helpful for determining the future patenting strategies; and
• reducing the costs in national/regional stages.

As noted above, PCT is not a system granting patents, but is actually designed to confer the procedural and economic benefits to the applicants. The 30-months procedure is outlined below in a simplified manner.

Filing Stage

The authority by which the PCT application must be filed depends on the Receiving Office (RO) prescribed for the specific country of the applicant. An applicant having nationality or place of business in Turkey, for instance, may file the PCT application before the following authorities;

• Turkish Patent & Trademark Office (TPTO),
• International Bureau (IB), and
• European Patent Office (EPO).

Applications filed before a non-competent authority, however are submitted to the IB as a courtesy service.

Minimum requirements of a PCT application:

Applicant should normally supply the following items in order to meet the basic requirements prescribed by the law (PCT-Art. 11) for obtaining a filing date:

• applicant should have a right to file a PCT application,
• an application in the prescribed language for the applicant,
• an indication that it is intended as an international application,
• designation of at least one contracting state,
• name of the applicant,
• a description,
• one or more claims.

An International Search Report (ISR) is issued after payment of the prescribed fees and accomplishing the basic requirements mentioned above. An International Search Report contains data of pertinent prior art along with comments of the Examiner concerning patentability. If the ISR contains negative statements and unfavorable opinion as to the patentability, applicant may follow one of the options mentioned below;

• filing PCT-Art. 19 amendments before the International Bureau,
• filing a demand and possibly PCT-Art. 34 amendments before the Examining Authority,
• waiting for expiration of the 30-month timelimit and dealing with the objections in national/regional phases.

Examination Stage (optional)

A request for substantive examination can be requested within 22 months from earliest priority date. Applicant may prefer to file a demand for an international examination in order to overcome the objections in the ISR. This would be preferable because a positive International Preliminary Examination Report (IPER) may considerably reduce the costs and Attorney work in national/regional offices after the PCT phase. Along with the demand, applicant may file a response to the ISR and possibly Art. 34 amendments as mentioned above.

Irrespective of whether an examination is carried out in the PCT phase, a Preliminary Patentability Report (IPER) is issued before the 30-months timelimit. This report is sent to all of the designated/elected offices by WIPO, for consideration in further proceedings in the concerned states.

Renewal Fees

There are no renewal fees for international applications. However, applicant may be incurred with the renewal fees of past years upon entry into national/regional phases.

Third Party Observations against PCT applications

WIPO has announced that third party observations can be filed against pending PCT applications, for instance via ePCT Public Server and WIPO’s PATENTSCOPE services. Accordingly, third parties may “anonymously” file observations and counter evidences against patentability of a PCT application within 30 months starting from the earliest priority date. Also applicant has the opportunity to file response to the observations and all submissions are made available to the public as well as to the searching and examination authorities.

National/Regional Phase Entries

Once the international phase is completed within the 30-months, the application needs to be nationalized or regionalized in order to be put into effect in desired countries. A Euro-PCT application, for instance, may be regionalized by entry into the European phase until 31 months from the earliest priority date. If the EPO was the International Searching Authority, the applicant does not need to pay the search fee once again in the European phase. If the EPO has acted as the International Examination Authority, special refunds are available also with respect to the concerned examination fee at the EPO. If the applicant misses the prescribed deadlines for national/regional phase entries, most offices still admit applications generally within an additional 3 or 6 months provided a surcharge is paid upon entry. National offices may also prescribe additional requirements such as supplementary search and examination.

Turkey is a member of EPC and PCT, and accepts nationalization of patents via both routes. A PCT national phase can be filed before the Turkish PTO as a designated or elected office, and applications received via this route are treated as national patent applications. Turkish PTO in this case dispenses with the search requirement and directly treats the application with substantial examination.

It should be borne in mind that;

• An application which validly enters to Turkey as a Chapter-II application, and which has a positive International Preliminary Report on Patentability (IPER), can directly be granted without substantial examination.
• An application nationalized under Chapter-II with a negative IPER is treated with 2nd examination (note that applicant may request examination up to three times),
• An application nationalized under Chapter-I with a negative IPER is treated with 1st examination (note that applicant may request examination again up to three times).

Deadline for PCT National Phase Entry in Turkey

Normally the deadline for nationalization of PCT applications is 30-months from the earliest priority date. However, a national phase entry up to 33 months is still possible provided a surcharge is paid at the time of the belated entry.

Examination stage

Turkish PTO applies “examination cycles” if the first examination report contains a negative opinion. Applicant is then invited to respond to the first examination report (second cycle). If the second examination report still contains a negative opinion as to patentability, a third chance, which is actually the last chance, is given to overcome the objections in the negative report (third cycle). If the third examination report does not allow any claim in the claims set, application is eventually refused. If the examination report references at least one claim as being patentable, application may proceed to grant based on the allowed claim(s).

Grant stage

Once the application is found to be allowable by the TPTO, applicant is informed about decision of the grant and said decision is published in the official patent bulletin. Paying a fee for certificate is optional.

Annuities

Turkish patent applications nationalized through the PCT route are subject to annuity fees from the third and each subsequent year calculated from the filing date of the application. An annuity is due on the same day of the month containing the anniversary of date of filing of the national patent application. If the applicant fails to do so, such annuity may still be paid within an additional term of six months with surcharge.

Failure to pay the renewal fees within the additional 6 months results in loss of rights which can be remedied by paying a fee for redress within 2 months after notification of the Turkish PTO. Payment of the fee for redress doesn't need to be supported by any evidence concerning failure of observation of the timelimit.

Appeal

Normally decisions of TURKPATENT can be brought into the attention of Board of Re-examination and Evaluation acting as a kind of Board of Appeal. Decisions of this board can be appealed before the Specialized IP Courts in Ankara.