Upon high amount of queries our law firm in Turkey received from our foreigner clients in the last couple of months, we have decided to publish this article, “Patent Lawyers in Turkey” which includes information regarding definition of an utility models as per 6769 numbered Turkish Industrial Property Code, benefits of obtaining an utility model registration in Turkey, terms and conditions for obtaining an utility model registration as per 6769 numbered Code, qualifications real persons and legal entities shall posses for a national utility model application in Turkey, utility model application and registration phases and stages, timeline for an utility model application in Turkey, required documents you need to deliver to your patent lawyer in Turkey for an utility model application, along with a few more useful subheadings. Our intellectual and industrial property 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 utility model application in Turkey.
MESCI Law Firm, as an up front intellectual and industrial property law firm in Turkey has legally assisted thousands of foreign clients from different sectors such as cosmetics, fashion, food and beverage, telecommunication and pharmaceuticals. Please don’t hestitate to contact our IP law firm in Turkey for a legal consultancy. Our firm offers to her clients also consultancy on patent and brand protection strategies and handles patent and trademark infringement lawsuits in Turkey.
If you would like to learn more about legal services our law firm in Turkey provides beyond borders, you can kindly visit our main Article, “Intellectual and Industrial Property Law”. You might would like to consider reviewing also our Article, “IP Law Firm in Turkey” in order to obtain more information on national patent applications in Turkey and PCT national phase applications in Turkey.
Understanding Meaning of Utility Models in Turkey
Utility model is a legal document that 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. In practice, it is seen that utility models are called as minor inventions. Utility models regulated under 6769 numbered Industrial Property Code Article 82 ff. and 142 ff., are differentiates from patents by not involving an inventive step and from industrial designs by not protecting the external appearance of the product.
As per 6769 numbered Turkish Industrial Property Code, starting with the application date, the time period of the utility model protection is ten years and these periods cannot be extended. Following expiry of the utility model protection period, subject utility model 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 utility model owner, one of the most important functions of utility model and patent law is to ensure the operability of competition in the public sphere and the development of the social economy.
Utility model 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, minor invention should not be subject to an utility model application because with a utility model 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 minor invention confidential and not making an utility model 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 Utility Model Registration in Turkey
- Your utility model rights will be protected under 6769 numbered Turkish Industrial Property Code for 10 years if you pay annual fees for each year thus you will have the opportunity to exclusively manufacture, use and sell the registered product for 10 years.
- With the granting of utility model certificate, utility model owner can prevent third parties from producing, selling, using or importing the goods subject to a minor 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 utility model 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 license on the product for production, sale and/or marketing of the product by third parties or by assigning your utility model right to a third party and transferring the right of ownership.
- Having a high number of patents and utility models 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 Minor Invention Can Be Registered As An Utility Model?
As per Article 83 and 142 of 6769 numbered Turkish Industrial Property Code, an utility model shall be granted to minor inventions in all fields of technology provided that the invention is new and is susceptible to the industry. Research regarding whether if a minor invention is new 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 an utility model 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 utility model 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. Therefore, the utility model subject to your application should not have been presented to the public anywhere in the world before the application date.
It is important to mention that, statements made by the inventor regarding the utility model 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 utility model. Therefore, if you have made any statement to the public regarding your utility model, for example in order to measure it’s income potential, within the 12 months grace period prior to the application date, submission made to the public will not cause any loss of right in terms of utility model registration and your utility model will not lose it’s speciality of being new.
The fact that a minor invention is new is not a sufficient criterion for granting of an utility model certificate; minor invention shall also considered applicable to the industry. Any technical information that is producible and usable in any industrial area including the agriculture, it shall be considered as applicable to industry.
As we mentioned above, unlike patents, the inventive step criterion is not sought for utility model registrations. Here again, we find it necessary to explain the inventive step criteria sought for patents, because sometimes client candidates may not be sure whether their invention should be registered as an utility model or a patent. At this point, it should be emphasized that it is possible to convert an utility model application into a patent application and a patent application into an utility model application.
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.
Some inventions cannot be protected as utility model. These inventions are counted under Article 83 and 142 of the 6769 numbered Industrial Property Code. Inventions violating public order or public moral; 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; all treatment modalities including the diagnosis methods which are intended to be applied to human or animal bodies and surgical methods; 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; 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; inventions related to chemical and biological substances or chemical and biological methods or products obtained by these methods, inventions related to pharmaceutical-related substances or pharmaceutical-related methods or products obtained by these methods, biotechnological inventions, inventions relating to the products obtained by methods or these methods shall not be protected by the utility model certificate.
Persons To Benefit From Protection
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 utility model 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 utility model 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 utility model 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 utility model 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 National Utility Model Registrations 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 an utility model 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. If it is understood that the application doesn’t have any deficiencies in terms of conformity with the formal conditions or if the deficiencies are corrected in due time, this is being notified to the applicant by the notification of consistency and the application procedures continue in accordance with Article 120 of the Implementation Regulation.
The search request for the utility model application can be made together with the application or it can be made within 2 months following the notification of the letter stating that there is no defect in the application procedures mentioned in the previous paragraph, without the need for a new notification regarding issuance of the research report. The research report is prepared according to the claims, taking into account the entire specifications.
In research report, documents that can be taken into account in deciding whether the invention subject to the utility model is new, which are accessible during issuance of the research report. If it is determined that the application or the related invention does not comply with the provisions of the Law, reasons along with their legal grounds for not granting the utility model are being explained within the research report. Then, the research report prepared is being notified to the applicant together with a copy of the documents specified in the report as the state of art and is being published in the Bulletin.
Utility model applications are published in the Bulletin after 18 months following the application date. In case the research report is ready before the publication of the application, the research report is published together with the application. However, if the research report is prepared after the publication of the application, it is published separately from the application (Implementation Regulation Art. 120/11). The applicant may object to the content of the search report by submitting relevant documents and evidences within 3 months following the publication of the research report. Within mentioned time, third parties also have the right to present their statements against registration of the utility model. Objections and opinions not submitted in due time cannot be evaluated.
The application is being accepted or rejected following evaluation of the objections presented against publishing of the research report and counter statements presented against mentioned objections. In case the application is accepted, an utility model certificate is issued and provided to the applicant in case the document issuance fee specified in the Tariff is paid. National patent applications are concluded within an average of two years.
Which Documents Are Required For A National Utility Model Application In Turkey?
- Application form,
- Receipt proving that application fees are deposited,
- Priority document,
- Identity, address and contact information of the applicant and the inventor,
- Identity, address and contact information of the 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 an utility model 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 utility model right. In other words, if you have made an utility model application in a foreign country, based on this application and by presenting the priority document and depositing the required amount, you can make an utility model application in Turkey within 12 (twelve) months and if there has been entrance of the same utility model in Turkey within mentioned time, such an aggressor utility model 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.
IP Law Firm in Turkey
MESCI Law Firm is an Intellectual Property law firm based in Turkey, operating with teams of dedicated lawyers experienced on Turkish intellectual and industrial property law, registered before the Istanbul Bar Association which differentiates our perspective from traditional patent firms. Our staff have years of experience 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. If you are looking for a patent lawyer in Turkey, you can book an appointment now and ask the patent lawyer appointed specifically to your case.