Patent Infringement Lawsuits in Turkey ; In every society, there are markets shaped according to the economic structure and level of development of the community, formed by various divisions of labor. When left to its own devices, the community gives rise to a spontaneous economic system. This spontaneously arising system is called the market economy. In economies referred to as market economies, the coordination of economic activities are carried out by markets themselves.
Market economies are based on the understanding that economic relations are built on competition. And competition is essentially defined as the race undertaken by entrepreneurs in a market to acquire more customers and increase their sales of goods and/or services, thereby increasing their profits.
With the world economy gaining a global identity and changing as a result of technological developments, in a market associated with customer preferences, the planning and development of processes such as research and development, manufacturing, quality control and placing on the market of products constitute main focal point of competition. Because a competitive market, by its own nature, has a dynamic function and encourages entrepreneurs to pursue technological advancements and invent new ideas.
However, to be sustainable and reach the top in such a competitive environment, it is necessary to protect innovations, ideas, and inventions that set one apart from competitors through mechanisms specified under various laws. In this article, we will discuss patent infringement cases, which are part of the patent protection process, for inventions that have been carefully crafted and patented to create a competitive edge against rivals.
What is a Patent?
It is observed that under the relevant laws of countries, inventions are not clearly defined, but it is determined what cannot be considered within the scope of an invention and how a patent can be granted based on the criteria the invention meets.
Generally, to talk about an invention that can be eligible for a patent certification, there must be a technical problem in the market, and the invention must provide a solution to this technical problem, which did not exist before the invention.
According to Article 82 of the 6769 numbered Industrial Property Code, it is stated that patents are granted for inventions in all fields of technology, provided that they are new (novelty), involves an inventive step (non-obviousness), and are applicable to industry (capability of industrial application).
According to Article 83 of the 6769 numbered Industrial Property Code, an invention that is not part of the state of the art is considered new. The state of the art includes everything that has been made available to the public anywhere in the world before the date of patent application, by means of written or oral description, use, or any other form. In other words, the state of the art refers to what is already known and it is not possible to claim something that is already known as an invention.
In order for an invention possessing the characteristic of novelty to be protected by being granted a patent, the invention must also involve an inventive step. Sometimes, despite an invention having the characteristic of novelty, it may include ordinary additions, modifications, or improvements in the ordinary course of the art.
These types of inventions, which can be considered as minor changes or additions that do not seem inventive to an expert in the relevant field, are not eligible for a patent. Pursuant to Article 83/4 of the Industrial Property Code, it is expressed as follows, “Considering the state of the art, an invention that is not obvious to an expert in the relevant technical field is deemed to involve the inventive step”.
When evaluating the inventive step, a person skilled in the technical field will examine whether the invention is obvious or not based on the documents related to the state of the art. Of course, it is not sufficient for the expert in the relevant technical field to simply state whether the invention is obvious; it is also necessary to concretely demonstrate the reasons and justifications for the obviousness result using various methods.
Worldwide, different examination methods are identified for assessing whether an invention involves an inventive step, such as Graham Factors, Teaching – Suggestion – Motivation test, Winduring – Pozzoli, Obvious Try, and Problem – Solution Approach. In the guidelines prepared by the Turkish Patent and Trademark Office relevant to patent applications, it is noteworthy that the Problem – Solution Approach system adopted by the European Patent Office is adopted as well.
What is Patent Infringement Lawsuits?
The actions stated under Article 141 of the 6769 numbered Turkish Industrial Property Code constitute infringement of a patent right. These actions lined within mentioned Article are as follows and in such cases patent owner can file a patent infringement lawsuit in Turkey with material and moral compensation claims:
- To imitate partially or completely the product forming the subject of invention as a result of production without the consent of owner of patent, constitutes patent infringement.
- To sell, distribute or release to commercial area the products forming the subject of invention with other ways or to import it for these purposes, to keep it for commercial purposes, to use it by means of making applicable or to make suggestion draw up contract related to the product through infringement action, although it is known or it is required to know that product in question is partially or completely produced through imitation, constitutes patent infringement.
- To use the method forming the subject of invention without receiving the consent of patent owner or to sell the products produced directly by method forming the subject of invention, to distribute or release to commercial area them or to import them for these purposes, to keep them for commercial purposes, to use them by means of making applicable or to make suggestion to draw up contract related to these products, although it is known or it is required to know that this method is used without permission, constitutes patent infringement.
- To extort the patent right, constitutes patent infringement.
- To expand the rights granted by owner of patent or utility model through contractual license or compulsory license without permission or to transfer these rights to third parties, constitutes patent infringement.
If actions are deemed to constitute infringement of the patent right listed in Article 141 of the 6769 numbered Turkish Industrial Property Code, the patent holder, whose right has been infringed, can generally request from the court to determine whether the action constitutes infringement, to prevent possible infringements, to cease the actions constituting infringement, to remove the existing infringement, and to claim compensation for material and/or moral damages arising from the acts constituting patent infringement.
When a patent infringement lawsuit is filed before the competent Intellectual and Industrial Property Rights Court, the determination of whether the patent right is infringed generally involves technical details that cannot be resolved solely based on the judge’s general legal knowledge. It is accepted that assistance from a panel of experts consisting of individuals with technical expertise in the relevant field is required in these cases.
To understand whether the actions of the defendant, whether an individual or a legal entity, constitute infringement of the patent right, it is necessary to have a clear understanding of the definition and function of the patent and to clearly establish the scope of the right, by examination of the application and registration documents related to the patent, such as the description, claims, and drawings, obtained from the Turkish Patent and Trademark Office, which must be subpoena by the court.
In the expert examination conducted for determination of the patent infringement, the technical problem solved by the patented invention will be considered, the scope of the solution that patent brings up will be determined, and the methods followed and the results obtained during the problem – solution process will be compared with the aggressor product.
If the alleged products that are claimed to infringe the patent right exhibit the same functions as the main claim of the invention and produce the same technical result, then it is deemed that these products infringe the patented invention subject to the dispute.
It is recognized in doctrine that the production and placing on the market of a product that uses the claims of a granted patent constitutes infringement of the patent right. However, in some cases, it is observed that some elements are added, some elements are removed, or some elements are simply changed on the original patented product and the infringing product is introduced to the market this way as a camouflage to the infringing actions.
To prevent such partially infringing actions, the legislator has used the phrase, “infringement by producing, wholly or partially imitating” within Article 141/1-a of the 6769 numbered Turkish Industrial Property Code.
Material Compensation in Patent Infringement Lawsuits in Turkey
As mentioned above, according to Article 149 of the Turkish Industrial Property Code, the right holder whose intellectual property right has been infringed may request the court to determine whether the act constitutes infringement, prevent the likely infringement from occur, cease the infringing actions, remove the infringement, and claim compensation for material and moral damages.
The individuals who commit acts that are considered infringement of patent rights are obligated to compensate the damages suffered by the right holder. The liability for compensation of those who commit acts considered infringement of patent rights is essentially a tort liability within the scope of the Law of Obligations, and in accordance with Article 40 of the 6098 numbered Turkish Obligations Code, a person who causes harm to another by a wrongful act with fault is obliged to remedy that harm. In patent infringement cases with a claim for material compensation, the right holder may request the compensation of their material damages.
The damages suffered by the right holder include “actual loss” and “loss of profits”. With regard to the calculation of loss of profits, the patent owner in Turkey is granted the right to choose one of the three different calculation methods the law specifies. Actual loss is defined as the net decrease in the trademark owners’ assets due to infringement of his patent rights, while loss of profits refers to the losses that occur if the infringement action had never taken place, and the probable gain could not be obtained due to the fact that the assets of the patents’ right holder did not reach to the point they would reach.
The calculation of loss of profits is carried out by panel of experts using one of the following evaluation methos, often by examining the defendants’ commercial books and records:
- The potential income that the right holder could have obtained if there had been no competition from the infringer.
- The net profit obtained by the infringer as a result of his infringing actions.
- The license fee that the infringer would have had to pay if they had lawfully used the right through a licensing agreement.
Preliminary Injunction in Patent Infringement Lawsuits in Turkey
One of the most effective methods that a patent owner can resort to in case of patent infringement is to apply for a preliminary injunction. If the Court of Intellectual and Industrial Property Rights determines that there are sufficient evidence in the file that serious and effective efforts have been made to prove that the plaintiff’s patent has been or will be infringed, it will issue a decision on preliminary injunction to ensure the effectiveness of the judgement and prevent the plaintiff from suffering damages until the finalization statement is issued.
The examples of the content of the preliminary injunction are provided under Article 159 of 6769 numbered Industrial Property Code, and the situations stated in Article 159/2 are not exhaustive. According to the mentioned article, when a patent infringement lawsuit is filed, the lawsuit can be filed with a request for a preliminary injunction (PI), and the preliminary injunction may include the following contents:
- Preventing and ceasing the acts that constitute infringement of the plaintiff’s patent right.
- Seizing and prohibiting the infringing products, the means used exclusively in their production, and other non-infringing products, in a manner that does not hinder the production of other products, within the boundaries of Turkey or in areas such as customs, free zones, or regions, wherever they are located.
- For the compensation of any damages suffered by the plaintiff, the party involved in the acts constituting infringement of the trademark right shall provide security. This type of security, referred to in the doctrine as “Reverse Security”, is specifically regulated in the Industrial Property Code and is seen to be different from traditional types of security, as it is requested to protect the subject matter of the case.
If it is understood that the actions of the defendant do not constitute infringement and the plaintiff loses the patent infringement case, it will become evident that the preliminary injunction was unjust, and in such a situation, the damages arising from the preliminary injunction can be claimed by through a new lawsuit.
It should be remembered that if the owner of the patent right, who initiated the lawsuit with a request for a precautionary measure, is found to have obtained this measure unjustly, the opposing party can claim compensation for the damages suffered due to this unjust precautionary measure through a separate compensation lawsuit against the party who obtained the precautionary measure/preliminary injunction. For the owner of the patent right, who unjustly obtained the precautionary measure to be held responsible for the resulting damages, it is not necessary for them to have acted with bad faith when obtaining the preliminary injunction decision.
Therefore, we can say that the liability for material compensation arising from unjust precautionary measures is a liability without fault. Furthermore, it should not be forgotten that if the patent infringement lawsuit is filed with a request for a precautionary measure, the defendant may raise its objections to the precautionary measure within the time specified in Law which is one week and request the lifting of the precautionary measure by depositing money or a letter of guarantee as security.
Turkish Criminal Infringement Actions
Infringement of trademark rights is considered crime under the 6769 numbered Turkish Industrial Property Code. According to Article 30 of the Industrial Property Code, those who infringe on the trademark rights of others by producing or offering for sale, importing or exporting, purchasing for commercial purposes, possessing, transporting, or storing goods using imitation or confusion, can be sentenced to imprisonment for a term of one to three years and a judicial fine of up to twenty thousand days.
However, it is evident that there is no specific definition or sanction regarding infringement of patent rights in the 6769 numbered Turkish Industrial Property Code.
When considering the criminal sanctions, infringement of trademarks and copyrights are similar, and detecting such actions is relatively straightforward. However, patents differ from these types of intellectual and industrial property rights. For instance, determining whether the working method of a device is the same or similar to that of another device requires an examination by expert witnesses and a definitive court decision based on this examination.
In patent infringement cases, the defendant often files an invalidation lawsuit, claiming that the patent right is anonymous and does not meet patentability criteria. It is known that determining whether an alleged action constitutes patent infringement and whether the patented invention genuinely meets patentability criteria requires a detailed examination, and such trials can take years.
On the other hand, patents aim to encourage invention activities and, consequently, promote economic development. Individuals under the threat of criminal prosecution may refrain from engaging in research and development activities, which directly contradicts the purpose of granting patents and fostering innovation.
Therefore, we can say that there is no criminal sanction provided for patent infringements in the Turkish Industrial Property Code numbered 6769, as punishing actions that constitute infringement of patent rights may hinder the desire of third parties in the market to develop inventions.
Protection of IP rights before the customs are mentioned under Article 159/2 of the 6769 numbered Turkish Industrial Property Code. As per mentioned article, patent owner may request from the court, seize and store at their location anywhere within territories of Republic of Turkey including areas such as customs of the aggressor products.
Intellectual property rights that are registered before the customs are also protected under the provisions of 4458 numbered Customs Code, Article 57 and the following articles enabling the patent owner to protect his rights before the customs through IP rights protection electronic application – registration system.
Reach Us For Patent Infringement Lawsuits
In this article, we have attempted to briefly explain what a patent is, the importance of patents and the legal remedies available to the right holder in case of patent infringement. Of course, whether a patent is novel, involves an inventive step, the problem – solution approach, the types of lawsuits that can be filed in case of patent infringement, and the claims that the plaintiff can make are all subjects that require an in-depth analysis through separate articles.
If there are actions that constitute infringement of patent rights, you can contact our patent lawyers in Turkey to obtain detailed information specific to your case by consulting to our lawyers. We would be happy to assist you in your patent infringement lawsuits in Turkey, patent invalidation lawsuits in Turkey, determination of non-infringement of patent rights lawsuits in Turkey, collection of evidences lawsuits in Turkey, and obtaining precautionary measures in case of patent infringement. Please don’t hesitate to reach us for patent infringement lawsuits in Turkey.