Managing your patent portfolio

As a contracting state of both the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT), Turkey has continuously developed its internal infrastructure to improve the protection of patents and the methods to enforce those rights. It is possible to obtain patent protection via EPC, PCT or direct national filing. Legal enforcement, on the other hand, is an issue generally handled by the specialised IP Courts located in Istanbul, Izmir and Ankara. It is of vital importance to follow an appropriate patent strategy from the beginning in order to be the winning party at the end.

Validations under Article 65 of the EPC are generally considered as safe and quick way of nationalising European patents in Turkey. However, a European patent always carries the risk of facing an opposition within nine months of the grant, which can result in a revocation or limitation that has an effect in all of the contracting states. This means that a patent can go into revocation centrally at the EPO even if it could be effectively defended in the national proceedings instituted before the national IP courts.

The PCT route or direct national filings are the other options which offer independence from the European counterpart and provide patent rights unaffected by opposition proceedings at the EPO. A PCT application with a positive International Preliminary Examination Report may even lead to a quicker grant than an ordinary Euro-PCT application. However, in a recent case held before the First IP Court of Istanbul, it was ruled in Case No: 2011/192 E that the current legislation based on the Decree Law No: 551 (DL 551) in Turkey does not include any provisions pertaining to second and further use of a medicament for a particular disease, and so was in EPC1973. Therefore, the court ruled that claims in a second medical use format of the EPO (G 5/83) should be deemed null and void if they have been granted under EPC1973. Although the decision mentioned above has been reversed by the Supreme Court (Decision no: 2014/14787) and the case is now being heard again by the first instance court, there is still legal uncertainty about validity of claims formatted for a second medical use if the patent is granted under the national law or EPC1973. Therefore, EPC2000 is currently the safe harbour with respect to inventions in pharmacy and biotechnology.

If an opposition is not foreseen for a particular invention at the EPO, obtaining a national patent through EPC would be the preferable option as the patent would enjoy the more liberal provisions of the EPC as compared with the national law.

Sometimes it can be unavoidable and even preferable to amend the claims, especially if a lawsuit is instituted or likely to be instituted for revocation of a particular patent. Article 135 – DL 551 prescribes that one or more claims can be surrendered upon the request of the patentee. However, a surrender is not the same as an amendment because the latter denotes a more liberal way of changing scope of protection, for instance by incorporating a technical feature from the description, while a surrender denotes merely deletion of the claims. The national law does not permit post-grant amendments except for obvious errors in the sense of Article 64 – DL 551.

Article 138 of the EPC is the only way to obtain post-grant amendments within the revocation proceedings at national level. Otherwise, it is also possible to limit claims at the EPO by way of requesting a limitation under Article 105a of the EPC. However, the latter has a central effect in all of the contracting states by virtue of Article 68 of the EPC, which would not be preferable.

This means that national patents obtained through the EPC are easier to amend at the post-grant stage. A patent validated through EPC also enjoys the provisions of surrender at the same time. PCT or national filing, on the other hand, are bound with the national law, and provisions of the EPC are not applicable for this particular group of patents. This is another reason to choose the EPC route for obtaining a national patent in Turkey.

Article 96 of DL 551 prescribes that the patentee should use the invention within three years of publication of the grant. However, there are no legal consequences leading to a loss of rights if this requirement is not met. The only consequence could be compulsory licensing as prescribed by Article 99/a of DL 551. If the patentee has no good and fair reason for not using the invention within the prescribed time interval, third parties may request a compulsory licence through the competent courts. However, current legislation also states that the working requirement can be alleviated if the patentee has good and fair reasons. In the Regulations relating to DL 551 – Article 39, it is stated that market conditions are taken into consideration for the working requirement. Technical and economical conditions such as marketing authorisations, compliance with standards, and the need for modifications for implementation of the invention are all considered fair reasons.

It is quite a common practice for IP holders in Turkey to file a voluntary licensing offer at the Turkish PTO in order to circumvent the working requirement. However, this has more or less the same consequence as compulsory licensing. This is because once an offer for licensing is filed, third parties may ask to have a licence and this offer cannot be retracted if any third party has already requested a non-exclusive licence based on the patentee's offer. Therefore, the following steps are recommended for patent holders in Turkey:

• Filing an offer for licensing should be avoided because it has similar consequences to compulsory licensing based on non-working of the invention. Once a licence is granted to any third party, an exclusive licence cannot be granted in future during the validity period of the previous non-exclusive licence.

• It is strongly recommended to file all evidence regarding commercialisation, import/export, technical modifications, negotiations for licensing, and procedures for compliance with regulatory requirements within three years of publication of the grant.

• Even if the actual use occurs after the three-year period, patent holders are still advised to file proof of using the invention because the law is unclear regarding post-dated proof of use and its effect on third parties. Filing evidence is better than filing nothing.

• Should there be a danger of a compulsory licence by a third party and it is intended to launch/commercialise a product after the three-year term, it would be advisable to publish a commercial or proposal to sell the patented technology in newspapers, sector magazines or any other domestic source of publication in Turkey, to have a date and show that a fair reason exists for the delay in using the invention.

Litigation based on infringement or revocation is quite cheap and can't be compared with European countries. Official fees are minimal and are generally determined based on fixed rates rather than the value of the case, except in cases where damages are sought. This means that most patent holders find it attractive to attack a potential infringer without investigating whether probability of infringement is low or high, deciding that it is worth a try. While it is true that a case, even if it is lost, does not cost too much, it is important to remember that each and every attack on a potential infringer may attract a counter action for revocation. Patent owners need to be careful before warning of or acting against a potential infringer, and it is of vital importance to investigate potential infringement beforehand.

Another important issue is that the foregoing preliminary investigations and preparations need to be reinforced with evidence collection before the potential infringer becomes aware of the infringement proceedings instituted against him, so that loss of evidence may be avoided during proceedings. Evidence such as product samples, brochures, catalogues, advertisements, and quotations relating to offering for sale may sometimes readily be collected before proceedings begin. Collection of evidence officially through the court is also possible, but there is a risk that evidence could be lost and never appear again if the party accused of infringement somehow becomes aware of the proceedings in advance.

The current legislation regulated by DL 551 allows unexamined patents to be granted upon the request of the applicant after receiving the search report. Unexamined patents can be granted even if the search report is entirely negative and the subject matter of the claims clearly lacks patentability. There is a considerable stock of unexamined patents in the patent portfolio of local pharmaceutical companies ready for use in counterattacks as a response to possible infringement proceedings. It is possible that an infringement attack could lead to a counterattack based on an unexamined patent.

To avoid this kind of counter action, it is sensible to check the patent portfolio of an assumed infringer before instituting proceedings and eliminate any risks associated with the unexamined patents. Normally, the most effective way of eliminating any unexamined patent is simply filing a request for examination at the Turkish PTO, because DL 551 allows third parties to file this request without seeking consent of the patent holder. It is strongly recommended to also file observations against patentability within six months of the publication referring to the examination request. This strategy ensures that an unexamined patent turns out to have what is called "application status" and means that the courts cannot establish a ruling based upon an application which has not yet been granted (DL 551, Article 136).

Revocation and infringement proceedings are held based on written adjudication, and the reports of the panel of experts are generally decisive because the judges have no technical background. The preference is for the panel of experts to be composed of a patent attorney and two or more academics with expertise in the relevant technical field. The main deficiencies arising in the reports of the panel of experts are mostly caused by the low level of expertise in patent law rather than scientific knowledge. For instance, the experts would not be aware of the methodologies for investigating equivalence or contributory infringement and they can even be unaware of patentability requirements. It is important to explain in the written pleadings each and every detail of the relevant points of law in as simple a manner as possible before going into detailed technical matters.

In order to avoid any surprising outcome in the report of the experts, it is becoming popular in some of the first instance courts to summon the experts before taking over responsibility of the file and allowing the parties to make submissions orally by pointing out the key issues to be resolved. Questioning of the experts after they have drafted their report is also possible in the court room under Article 152 of the Code of Civil Procedure.

It is very important to support the facts and arguments with evidence, and of course the case law and precedents constitute an important part of the arguments. Unfortunately, the decisions of the first instance courts and supreme courts have not been compiled in a well-organised manner within a single source, and there are no guidelines for the determination of a standard practice at the Turkish PTO. It is extremely important to rely upon external sources such as the legislation and documentation of the EPO. In the national proceedings it is a good idea to refer to EPC, Case Law of the Boards of Appeal and Guidelines for the Examination at the EPO, especially with respect to the issues relating to nullity. For instance, the case law of the EPO relating to selection inventions, ex post facto analysis, the form of the experimental data, prior use and the problem-and-solution approach would all be used as evidence supporting the facts and arguments within the national proceedings in Turkey. With regard to infringement, precedents of German and British courts are commonly used sources to support the legal arguments.

Normally it is not permitted to submit evidence at a late stage of proceedings, and evidence not submitted within the time limit prescribed by the court is deemed to be renounced under Article 140 of the Code of Civil Procedure. However, Article 145 of the Code of Civil Procedure provides an exception and prescribes that evidence can be filed at a late stage if the aim of the party is not to delay proceedings or the late filing is not caused by a mistake of the party. Additionally, the decisions of the Supreme Court prescribe that fresh evidence can be considered even after receiving the report of the panel of experts because the validity of a patent is directly relevant to public policy. This point of view is broadened to include the fact that the panel of experts may carry out a prior art search and the experts may incorporate a freshly discovered piece of prior art into the proceedings (Decision no 2010/7759 of the Supreme Court). Normally, the experts are not expected to conduct a search for assessment of patentability and they usually examine the case based on the evidence in the file. However, it may happen that an expert who finds particular evidence may decide not to incorporate it into the file as they consider this as generating evidence in favour of one of the parties. In view of the current case law, it would be wise to request and encourage the experts not to ignore evidence discovered during their investigations.

Aydin Mutlu
		Aydin Mutlu is the managing partner of INVOKAT Intellectual Property Services, a European Patent Attorney and a Turkish patent and trade mark attorney. Mutlu is a leading expert in patent prosecution and litigation in Turkey. He is one of the few EQE-qualified European patent attorneys practising in the private sector in the country. He is a Council Member at the EPI and is also a member of various organisations such as FICPI, AIPPI and INTA. Mutlu represents clients from different technical areas before the Turkish Patent Institute and the European Patent Office in all proceedings, including oppositions and appeals. He also leads litigation at a national level with his technical and legal qualifications by virtue of his many years' experience as a court-appointed expert. With his background in chemical engineering and a litigation certificate from the Centre d'Etudes Internationales de la Propriété Intellectuelle (CEIPI), Mutlu leads contentious cases in a unique way, using his strong background in various sectors – especially pharmaceuticals and biotech. He is particularly known for his adaptation of European case law in the legal proceedings at the national level. Mutlu's activities are particularly focused on life sciences, biotech, industrial chemicals, automotive, household appliances and metallurgy. He has been involved in contentious matters relating to most of the blockbuster drugs in Turkey – either as a representative or a court-appointed expert.

Nazli Deniz Kol
		Nazli Deniz Kol is a legal counsel at INVOKAT Intellectual Property Services, an attorney at law and a Turkish patent and trade mark attorney. After completing a law degree at Marmara University, she carried out legal studies at Università degli Studi di Siena, Italy. She handles IP prosecution and litigation work for domestic and international clients. Her activities particularly involve prosecution of trade marks and designs before the Turkish PTO, and also IP litigation, especially for the patents in the field of life sciences. She speaks English and Italian.