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Upon heavy demands we received from our foreigner clients and client candidates, we have decided to publish this article, “IP Law Firm in Turkey” which includes information regarding definition of patent, benefits of obtaining patent registration in Turkey, terms and conditions for obtaining patent registration as per 6769 numbered Industrial Property Code, qualifications real persons and legal entities shall posses for patent application in Turkey, patent application and registration phases and stages, timeline for patent application in Turkey, required documents you need to deliver to your patent attorney for patent application, PCT national phase applications in Turkey and EPC validations in Turkey along with a few more useful subheadings. Our law firm in Turkey is pleased to provide legal consultancy and offer legal services for foreigner real persons or legal entities who are willing to file a patent application in Turkey. MESCI Law Firm, as an up front intellectual and industrial property law firm in Turkey has legally assisted many foreign clients from different sectors such as cosmetics, fashion, food and beverage, telecommunication and pharmaceuticals. Please contact our law firm for legal consultancy.

UNDERSTANDING MEANING OF THE PATENT

Patent is a legal document provides its owner an exclusive right in order to prevent third parties from producing, using, selling or importing an invention for a certain period of time and indicates real owner of the invention, in return for public disclosure of the related technical information to the community for technological and economic development of a state.

As per 6769 numbered Turkish Industrial Property Code, starting with the application date, the time period of the patent protection is twenty years and these periods cannot be extended. Following expiry of the patent protection period, subject patent becomes public property and becomes anonymized enabling third parties to use the technical information without paying any license fee to the owner.

This is a natural consequence of the balance formed between the public interest and the benefit of the inventor due to the fact that besides protecting the patent owner, one of the most important functions of patent law is to ensure the operability of competition in the public sphere and the development of the social economy.

Patent registration document provides the owner the right to benefit from the protection provided by the Industrial Property Code, as well as the right to be subject to various legal acts of disposal such as license and assignment. On the other hand, owner might would like to keep the technical information confidential, as a trade secret. If this is the case, invention should not be subject to a patent application because with a patent application, the owner tacitly accepts to share the technical information with the community.

However, it shall be duly noted that in return for keeping an invention confidential and not making a patent application thereto, the product cannot be protected under the Turkish Industrial Property Code. In such cases, owner of the product can only protect his rights within the scope of general law principles (unfair competition articles of the Turkish Commercial Code).

BENEFITS OF PATENT REGISTRATION IN TURKEY

Your patent rights will be protected under 6769 numbered Turkish Industrial Property Code for 20 years if you pay annual fees for each year thus you will have the opportunity to exclusively manufacture, use and sell the patented product for 20 years.
With the granting of patent certificate, patent owner can prevent third parties from producing, selling, using or importing the goods subject to a patent or keeping those at hand for such purposes and for other reasons than personal need.
Some e-commerce platforms remove the images of offensive commodities sold on the platform and the seller profiles that offer these commodities to customers, only if you submit your patent registration document.
All industrial property rights can be protected before the customs authority if they are registered. Thus, it is possible to seize, confiscate and destroy of the aggressor products by legal means, before they enter in Turkish trade area.
You can make profit by issuing a license on the product for production, sale and/or marketing of the product by third parties or by assigning your patent right to a third party and transferring the right of ownership.
Having a high number of patents creates a positive impression on investors about your investment and technology capacity and provides information regarding the areas of your expertise.

HOW CAN I UNDERSTAND THAT MY INVENTION CAN BE PATENTED?

As per Article 82 of 6769 numbered Turkish Industrial Property Code, 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 the industry. Research regarding whether if an invention is new or not, whether if it carries an inventive step or not and whether if it is susceptible to the industry is made by Turkish Patent and Trademark Office.

If the technical knowledge or teaching made subject to a patent application doesn’t include the state of the art during the patent application or priority date, it is considered new. The state of the art shall cover everything reachable by the community and which is, before the application is submitted, presented anywhere in the world by introducing in written or verbally or made public by usage or any other ways. These documents may be national or international patent documents previously obtained by third parties, as well as brochures, articles, catalogs for anonymized products. In other words, the state of the art covers everything that is accessible to the public, which has been disclosed to the public in any form, by means of written or verbal promotion, in any part of the World before the application date.

It is important to mention that, statements made by the inventor regarding the patent within 12 (twelve) months grace period prior to the application date or within 12 (twelve) months grace period prior to the date of priority right if priority right was demanded, do not affect the grant of the subject patent.

The fact that an invention is new is not a sufficient criterion for granting of a patent certificate. The invention must also contain the inventive step. As a rule, it is not possible for trivial and obvious information to be considered as an invention and get patented. When compared to the existing knowledge and the state of the art, if an invention involves technical advance or have an economic significance or both and that makes the invention not obvious to a person skilled in the art, that invention deems to contain the inventive step.

Finally, any technical information that is producible and usable in any industrial area including the agriculture, it shall be considered as applicable to industry.

Discoveries; scientific theories and mathematical methods; intellectual products, business activities or rules, plans and methods regarding games; computer programs; literary and artistic works and scientific works and products containing aesthetical characteristics and presentation of an information cannot be considered as inventions according to Turkish Law thus such products cannot be patented.

PERSONS TO BENEFIT FROM PATENT PROTECTION IN TURKEY

Citizens of Republic of Turkey, natural or legal entities demociled or engaged in industrial or commercial activities within the borders of Republic of Turkey, persons who have the right of application according to the Paris Convention or 15/4/1994 dated Agreement Establishing the World Trade Organization, according to reciprocity principle, persons whose citizenships are in states that provide Turkish citizens the protection of industrial property rights shall benefit from protection provided with the 6769 numbered Industrial Property Code.

Citizens of the Republic of Turkey based in Turkey can make their own patent applications by applying to the Turkish Patent and Trademark Office. However, of course, in such a case, it is very likely that a real person Turkish citizen who does not have sufficient knowledge of the Industrial Property Law will miss the legal deadlines that must be followed to register his/her patent before the Turkish Patent and Trademark Office and suffer from loss of rights. In order to prevent such a problem, we strongly recommend that Turkish citizens to make their patent applications through a patent attorney.

On the other hand, it is required by law that real persons or legal entities residing in a foreign country shall authorize a patent attorney residing in Turkey to make their patent applications to the Turkish Patent and Trademark Office on behalf of them. Pursuant to Article 160 of the 6769 numbered Industrial Property Code, persons residing abroad can only be represented by patent attorneys. Transactions carried out by the principal without being represented by an attorney are deemed not done.

PHASES AND PROCEDURES REGARDING PATENT REGISTRATION IN TURKEY

First of all, an online patent application shall be made through the Turkish Patent and Trademark Office web page. Your application will be subject to a preliminary examination first which in practice, generally takes around 3 months. With such a preliminary examination Turkish Patent and Trademark Office determines whether information and documents required for a patent application as per Articles 71-94 of the Implementing Regulation, are presented wholely and in due form or not.

In case of deficiencies in these requirements are detected by the Office, Turkish Patent and Trademark Office notifies the applicant or his/her attorney that deficiencies shall be corrected within 2 months. If these deficiencies are not corrected within mentioned period, the patent application will be rejected.

On the other hand, the applicant, together with the application or without the need for notification, within 12 (twelve) months from the date of application, requests issuance of the research report provided that the relevant fee is deposited. Failing that shall result in considering the application to be withdrawn.

If the applicant requests issuance of the research report in due time if it is realized that the application is consistent with formal conditions or the deficiencies are corrected within required period, the search report shall be prepared, the applicant shall be notified and it shall be published in the Bulletin. Issuance and service of the research report can take around 12-15 months. A research report has great importance due to it’s nature providing a list of all current and pending patents that are similar or identical to your invention.

Clients shall note that, they have the right to present their objections within 3 months following the publishing of the research report by attaching related documents. The applicant has the right to proceed with the application and directly demand issuance of research report rather presenting any counter statements against the research report if he/she is in the opinion that documents stated in the research report will not prevent patentability of the invention. In such a case, the applicant is not required to make changes in specifications.

If the applicant decides to proceed with the application, he/she should request the Turkish Patent and Trademark Office to issue the examination report within 3 months following the notification of the research report. Otherwise the application will be considered withdrawn.

Upon the applicants request for the examination, the examination report stage is being initiated. Through this phase, it is being determined whether the invention is patentable or not. If the Institutions opinion is against the benefit of the applicant which we understand the patent application will be rejected, the Institution sends a total of 3 (three) notifications and demands the applicant to submit their statements.

For each notification, the applicant has the right to present his/her statements and make changes in specifications in 3 months. If no statements are presented or no changes made in specifications in specified time, the application is deemed to be withdrawn.

In some cases, the Institute may notify the applicant that the patentability criteria are met, but that some changes should be made in the specification set for registration. In such cases, the Institute gives the applicant 2 (two) months starting from the date of notification so that changes can be made accordingly.

If, as a result of the examination phase, it is concluded that the patent is in compliance with the provisions of the Law, patent is being granted, the decision is notified to the applicant and this decision is published in the Bulletin.

WHICH DOCUMENTS ARE REQUIRED FOR A NATIONAL PATENT APPLICATION IN TURKEY

EPC validation application form,
PCT national phase application form,
Claims,
Drawings
Abstract,
Information proving that application fee is deposited,
Pre-emption certificate and pre-emption request, if any,
Identity and contact information of the applicant and the inventor,
Identity and contact information of the applicant’s attorney

shall be presented to the Institution during application. A statement regarding the type of relationship between the applicant (owner) and the inventor must be correctly marked in the application form and notified to the Institution in this manner.

As a rule, the set of specifications can be made in one of the official languages of the states that are a party to the Paris Convention or the Agreement Establishing the World Trade Organization or that implement the principle of reciprocity. However, in such a case, the Turkish translations of the set of specifications in a different language and the statement that the translations are the same as the text in the foreign language must be submitted to the Institute within 2 (two) months from the date of application without the need for any notification

WHAT IS A PRIORITY DOCUMENT

Priority right means that after an applicant files a patent application in a contracting state, she could, within a limited period of time, file another application in another contracting state based on the first application for protection of the same patent right. In other words, if you made a patent application in a foreign country, based on this application and by presenting the priority document and depositing the required amount, you can make a patent application in Turkey within 12 (twelve) months and if there has been entrance of the same patent in Turkey within mentioned time such an aggressor patent is being rejected which will enable your application to be accepted.

Clients shall duly note that, priority claim shall be made during or within 2 (two) months following the patent application and the priority document shall be presented within 3 (three) months following the patent application. Otherwise, the applicant cannot benefit from the priority right.

PCT NATIONAL PHASE APPLICATION IN TURKEY

As in other industrial property rights, in terms of patent protection, the registration system is adopted and patent rights are territorial. For example, if you register your invention only in Turkey, the product subject to the invention will only be protected within the geographical borders of Turkey. In order to obtain patent protection in more than one country, separate national patent applications must be filed in each country. In such cases, research and examination procedures are condemned to be made and carried out separately before the national patent offices of each state. Considering that a patent registration process can take an average of 3 years and that required fees must be paid separately for patent application filed in different countries, it is seen that this will obviously lead to time loss and money, and redundant repeat of the procedures related to patent application.

In cases where an invention is desired to be protected in more than one country, in order to facilitate the procedures, reduce the costs and ensure researches regarding the state of the art and preliminary investigations to be made from a single center, the Patent Cooperation Treaty (PCT) has been signed by member states. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in many countries. For that matter, the process of preparing the research and examination report is being made by the international authority based on the discretion of the applicant while, on the other hand the decision of granting patent is being issued by the national authority upon transition to the national phase. After the application is published internationally through WIPO, the applicant obtains the right to make a patent application in each of the member states within 30 months starting from the date of the international application. As it can be understood, PCT consists of two parts one being the international phase and the other being the national phase. Having made an international PCT application doesn’t automatically mean that patent rights will be obtained in every country.

International PCT application can be made to national patent offices of member countries or directly to WIPO. Therefore, as a rule, it is possible to make an international PCT application before the Turkish Patent and Trademark Office as the acceptance office. In such cases, the PCT application and related documents are sent to WIPO by Turkish Patent and Trademark Office and research report is being prepared by Turkish Patent and Trademark Office or EPO, depending on the request of the patent applicant. Following publication of the international research report through WIPO, the PCT national phase applications before national patent offices of member countries shall be filed by the applicant within 30 months starting from the date of the international application.

PCT applications, which are requested to enter the national phase in Turkey, should be made directly to the Turkish Patent and Trademark Office on the other hand. In order to ensure success in PCT national stage applications, it is important to determine which phase the international application is at. According to the stage reached in the international PCT application, different formality is being applied to the national phase application; PCT-1 or PCT-2. If international research report is issued and published, the applicant shall proceed with PCT-1 transactions of the national phase. On the other hand, if international examination report is issued and published, the applicant shall proceed with PCT-2 transactions of the national phase.

For applications entering to the national phase from PCT-1, international research reports are accepted as if they were national research reports, and local procedures continue in accordance with the national practice starting from this stage. For applications entering to the national phase from PCT-2, international examination report are accepted as if they were first -national- examination reports.

Thus for PCT application entering to national phase through PCT-2 Turkish Patent and Trademark Office can directly issue a patent document if the invention is patentable according to law or local transactions can be continued starting from the second -national- examination report.

On the other hand, if international examination report is issued and published, the applicant shall proceed with PCT-2 transactions of the national phase. For applications entering to the national phase from PCT-1, international research reports are accepted as if they were national research reports, and local procedures continue in accordance with the national practice starting from this stage.

For applications entering to the national phase from PCT-2, international examination report are accepted as if they were first -national- examination reports. Thus for PCT application entering to national phase through PCT-2 Turkish Patent and Trademark Office can directly issue a patent document if the invention is patentable according to law or local transactions can be continued starting from the second -national- examination report.

REQUIRED DOCUMENTS FOR PCT NATIONAL PHASE APPLICATIONS IN TURKEY

EPC validation application form,
PCT national phase application form,
Claims,
Drawings
Abstract,
Information proving that application fee is deposited,
Information proving that annual fees on due date are deposited,
International Search Report (ISR),
Preliminary Examination Report (IPER), if any
International publication document,
Priority document,

shall be presented to the Institution during PCT national phase application. Turkish translations of the aforementioned documents must be submitted to the Institution within 2 months from the date of PCT national phase entry without the need of any notification to be made by the Institution. This means that the application can be made in a foreign language other than Turkish. The institution doesn’t send any notification regarding the submission of translations, so it is important to follow up on this issue elaborately.

As per Article 73/2 of the Regulation on Implementation of the Industrial Property Code, annual fees due shall be paid during PCT national phase applications without the need of depositing an extra -penalty- amount. Annuity fees due can also be paid after such an application within 6 months following the national phase entry with the required additional fees.

EUROPEAN PATENT VALIDATION IN TURKEY

By signing of the European Patent Convention (EPC) in Munich at 1973 a single procedure for the grant of patents on the basis of a single application is established in order to ensure cheaper, easier and stronger protection for inventions in the contracting states. EPC enables patent protection in all 38 principle and 2 pilot contracting states. The grant of a European patent may be requested for one or more of the contracting states. Pursuant to Article 66 of the European Patent Convention, a European patent application which has been accorded a date of filing shall, in the designated Contracting States, be equivalent to a regular national filing, where appropriate with the priority claimed for the European patent application.

A patent granted under EPC shall be called ‘European Patent’ and is bound to the provisions of the EPC on the subjects of validation, term of protection and its content only. For the remaining topics, such a patent is being bound to the provisions of the national law systems of the contracting states after validations. Therefore, any legal action that may arise in the event of disputes such as the violation of the patent right or invalidity of the patent in a contracting state after a European patent validation, related legal transactions shall be brought before the courts of the contracting states. European patent applications must be filed directly at the offices of the European Patent Office (EPO) in Munich, Berlin or the Hague.

Making an application to the European Patent Office and publishing of the application doesn’t automatically provides patent protection in contracting states. The European patent must be validated in each contracting party within 3 (three) months of its publication in the European Patent Bulletin; it other words, validation applications must be made separately in each country where protection is requested. If mentioned time limit is exceeded, it is not possible to protect the European patent in Turkey.

REQUIRED DOCUMENTS FOR EUROPEAN PATENT VALIDATION IN TURKEY

EPC validation application form,
Specifications,
Claims,
Abstract,
Drawings,
Priority document,
International publication document (B1 or A1),
Information proving that application fee is deposited,
Information proving that annual fees on due date are deposited,
Turkish translations of the above

are presented to the Turkish Patent and Trademark Office during the application. We find it important to remind our clients that validation applications shall be made within 3 months following the date of international publishing. If the application is made in foreign language within the mentioned time, it is possible for our clients to present Turkish translations of the documents required within 3 months following the date of validation application.

Another important point we find it necessary to mention is that text that changed as a result of objection or restriction transactions shall also be published in the Turkish Patent Bulletin. As per the Regulation Indicating the Application Method of the European Patent Convention Regarding the Grant of European Patents in Turkey, in the event that a European patent is modified as a result of an opposition or restricted upon the request of the owner/applicant, the translation of the modified text along with the information proving that required fee is deposited to Turkish Patent and Trademark Office, shall be presented to Turkish Patent and Trademark Office within 3 (three) months starting from the publishing of the modificated text in the European Patent Bulletin. If translation of the modified text is not presented and/or the fee is not deposited in due time or if additional time is not requested by paying the additional time fee required, the European patent is considered invalid from the date of entry in Turkey

For more information regarding national and international patent applications and registrations please contact our IP law firm in Turkey.

INTELLECTUAL PROPERTY LAW FIRM IN TURKEY

MESCI Law Firm consists is a globally recognized IP Law Firm in Turkey consisting of Turkish patent lawyers. A Turkish patent lawyer in Turkey has deep knowledge of 6769 numbered Industrial Property Code, 30047 numbered Regulation on the Implementation of the Industrial Property Code and other related national and international regulations, follows current developments in the field of patent law and provides various services regarding patent law. In this context, a patent lawyer provides legal services within the scope of patent law and can file and follow any lawsuit before the Civil Courts for Intellectual and Industrial Property Rights. If a patent lawyer is also a patent attorney, he/she can make patent, utility moden and industrial design applications before the Turkish Patent and Trademark Office, follow the application and registration process and make all kinds of legal transactions required before the Turkish Patent and Trademark Office.

We are patent lawyers in Turkey. And in this context, we carry out the patent application processes of our clients, follow all kinds of legal proceedings before Turkish Patent and Trademark Office, and defend rights of our clients in the best way before the Civil Courts for Intellectual and Industrial Property Courts regarding disputes involving our clients’ registered patents.

IP LAW FIRM IN TURKEY

MESCI Law Firm is an Intellectual Property law firm in Turkey that is operating with a team of dedicated and reputable attorneys registered before the Istanbul Bar Association which differentiates our perspective from traditional patent firms, having clients all around the World from United States of America to China, from UAE to England, from Russia to India.

Our staff are well experienced in handling any transaction before Turkish Patent and Trademark Office, complex litigations filed before Specialized Courts for Intellectual and Industrial Property Rights and Commercial Courts of First Instance regarding trademark, industrial design, patent and utility model disputes.

We are all about empowering you with knowledge! For more information regarding national and international patent applications, European Patent validation applications and PCT applications to be filed in Turkey please contact our IP Law Firm in Turkey.

If you are looking for a patent lawyer in Turkey, book an appointment now and ask the patent lawyer appointed specifically to your case.

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