PATENT, DESIGN AND UTILITY MODEL REGISTRATION UNDER TURKISH LAW

Intellectual property (IP) refers to creations of the mind such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

IP is protected in law by, for example, patentscopyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.

In principle, the patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner’s consent.

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

Similar to patents, utility models protect new technical inventions through granting a limited exclusive right to prevent others from commercially exploiting the protected inventions without consents of the right holders. In order to obtain protection, an application must be filed, and a utility model must be granted.

They are sometimes referred to as “short-term patents”, “utility innovations” or “innovation patents”. It is not easy to define a utility model, as it varies from one country to another. In general, utility models are considered particularly suited for protecting inventions that make small improvements to, and adaptations of, existing products or that have a short commercial life. Utility model systems are often used by local inventors.

In some countries, utility model protection can only be obtained for certain fields of technology and only for product inventions. For example, in some countries, technical, chemical, and biological processes are not eligible for utility model protection. In those countries, there is no choice but seeking patent protection if the invention falls under such non-eligible subject matter.[1]

On the other hand, design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. Product means any industrial or handicraft item, including parts intended to be assembled into a complex product, products like packaging, presentations of more than one object perceived together, graphic symbols and typographic typefaces, but excluding computer programs.

Complex product means a product which is composed of components which can be replaced or renewed by disassembly and reassembly of the product. If the component part is mounted to the complex product, remains visible during normal use of the complex product or if the visible features of the component part fulfil the requirements as to novelty and individual character.

Industrial Property Law Article 55;

“Design shall be the appearance of the whole or a part of a product resulting from the features of, the line, contour, color, shape, material or texture of the product itself or its ornamentation.

(2) Product means any industrial or handicraft item, including parts intended to be assembled into a complex product, products like packaging, presentations of more than one object perceived together, graphic symbols and typographic typefaces, but excluding computer programs.

(3) Complex product shall be a product which is composed of components which can be replaced or renewed by disassembly and reassembly of the product.

(4) A design shall be protected as a registered design in case it is registered in accordance with the provisions of this Act and a design shall be protected as non-registered design in case it is presented to the public for the first time in Turkey.” [2]

Industrial Property Law Article 82;

A patent shall be granted to the inventions in all fields of technology provided that the invention is new, involves an inventive step and is susceptible to industry.

Below mentioned shall not be considered as inventions. In case the application for a patent or the patent itself are involved in the subjects or activities mentioned below, this subject only or the activity itself shall stay out of patentability.

a) Discoveries, scientific theories, and mathematical methods;

b) mental acts, business activities or game related plans, rules, and methods;

c) computer programs;

ç) products with aesthetical creations, belles-lettres, artworks, and treatise;

d) presentation of the information.

(3) Below mentioned inventions shall not be granted a patent:

a) inventions violating public order or public moral;

b) biological processes relating to plant varieties or animal races; or intending to generate plant varieties or animal races with the exception of microbiological processes or products obtained in the result of such processes;

c) all treatment modalities including the diagnosis methods which are intended to be applied to human or animal bodies and surgical methods;

ç) discovering only one of the parts of human body including human body and a gene sequence or a partial gene sequence in the various phases of their generation and evolution;

d) the human cloning processes, the changing processes of genetic identity of human sextinked inheritance, using human embryos for industrial or commercial purposes, changing processes of genetic identity in a way that may agonize the animals without providing any significant medical avails for human or animals and animals that are obtained in the result of such operations. [3]

You can file a national patent application for Turkey directly with TURKPATENT. Alternatively, you may file an international application using the Patent Cooperation Treaty (PCT) or European Patent Office, and designate Turkey. As Turkey is a member state of the Paris Convention, you are also able to use the first filing date of an existing patent application as the effective filing date in Turkey, provided that you apply within 12 months from the first filing date. If you file a national patent application, you will receive an official filing receipt within 2 months. With application or within 12 months of the application date, or priority date, you should file a search request on the state of the art (also known as a prior art search). Failing to do so will cause the application to be deemed withdrawn.

If an invention is considered to be novel and capable of industrial application, it may be protected by a utility model. You can file a national application directly with TURKPATENT or file a PCT or European Patent application and designate Turkey. The term of protection for a utility model is 10 years from the filing date. When you file a national application, TURKPATENT checks whether it meets their formalities and issues an official filing receipt. With application or within 12 months from the application date, or priority date, you should file a search request on the state of the art (also known as a prior art search). Failing to do so will cause the application to be deemed withdrawn. The search report will be published in the bulletin. You may file an opposition to the conducted search report and also third parties have opportunity to notify a review to the search report. These oppositions and reviews will be evaluated by Re-examination and Evaluation Department of TURKPATENT. [4]

Infringement of a patent is the unauthorized making, using, selling, or importing of the patented invention during the term of the patent. The scope of this right is governed by the claims found in the issued patent. In most cases, a patent will issue with multiple claims. Only one claim needs to be infringed in order for the entire patent to be infringed. 

If a patent is infringed, the patent holder may sue for relief in the appropriate court. The patent holder may ask the court for an injunction to prevent the continued infringement and may also ask the court for an award of damages. In such an infringement suit, the defendant may question the validity of the patent, which is then decided by the court. The defendant may also claim that its actions do not constitute infringement. Infringement is determined by comparing the language of the patent claims against the allegedly infringing device: if what the defendant is making does not fall within the language of any of the claims of the patent, there is no infringement.

According to decision 2017/952 given by the regional court of appeal, alleged advantages to which the patent proprietor/applicant merely refers, without offering sufficient evidence to support the comparison with the closet prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step. The board added that there was no reason to deviate from this case law as it was based on the understandable rule that a patent can only properly be granted for a solution claimed as non-obvious if it actually has the alleged effect.

Some beneficial effects or advantageous properties, if appropriately demonstrated by means of truly comparable results, can in certain circumstances properly form a basis for the definition of the problem that the claimed invention sets out to solve and can, in principle, be regarded as an indication of the inventive step. The only comparative tests suitable for this are, however, those which are concerned with the structurally closest state of the art to the invention, because it is only here that the factor of unexpectedness is to be sought. [5]

The regional court of appeal has decided that the product which has been produced by the claimant shall not be considered as infringement of defendant’s patent rights and the registered patent (2009 09405 B) shall be invalid.

Öykü Kaygusuz

Trainee Lawyer

 

References:

1. World Intellectual Property Organization Official Website (wipo.int/patents/en)

2. Industrial Property Law Article 55

3. Industrial Property Law Article 82

4. Intellectual Property Rights in Turkey (assets.publishing.service.gov.uk)

5. Case Law of the Boards of Appeal of the European Patent Office, 7th Edition, 2013