International Reports - More Updates

Gün + Partners

30 May 2018
Declaration of use under new IP Law: consequences and timelines

The new IP Law has abolished the Patent Decree-Law provisions regarding the use requirement of patents and evidence of use. The new law states that non-use of a patent could result in a third party being granted a compulsory licence over that patent. Full text

23 May 2018
District court confirms regulatory data protection is an IP right

The IP Court recently rejected jurisdiction in a case regarding regulatory data protection. However, on appeal the district court found that the case concerned data exclusivity rights and the protection of unrevealed data, which is within the scope of IP courts. Full text

16 May 2018
First damages claim decision in pharma sector for unjust preliminary injunction

The Istanbul IP Court has recently decided on a generic company’s damages claim based on an unjust preliminary injunction, in what appears to be the first decision of its kind by Turkish IP courts within the pharmaceutical sector. Full text

07 Mar 2018
Invalidity attack blocks precautionary injunction demand

The Istanbul IP Court recently rejected a crucial precautionary injunction demand of a patent owner on the grounds that the demand required a full trial due to the pending invalidation action against the patent. Full text

24 Jan 2018
European patent validation and avoiding double patenting

The Patent and Trademark Office has offered a practical solution to seemingly conflicting provisions relating to double patenting in the Implementing Regulations to the European Patents Convention. Full text

17 Jan 2018
Use requirements, evidence of use and compulsory licences

The new Industrial Property Law has repealed and replaced decree-laws pertaining to the protection of patent rights, including patent use requirements and evidence of use. Patent use requirements are now set out under the provision on compulsory licences. Full text

06 Dec 2017
New regulation on employee inventions

Under a new regulation on employee inventions, if an employer demands a full or partial right to an employee invention, reasonable compensation and an award should be paid to the employee. The regulation also sets out rules for calculating reasonable awards. Full text

27 Sep 2017
Impact of finalised revocation decision on preliminary injunction demands

The Istanbul Second IP Court recently adopted a refusal decision, citing that it would not remove a preliminary injunction as the invalidation and dismissal decisions had not been finalised. Given the IP courts’ track record of deciding the exact opposite, this kind of decision is the beginning of a new era. Full text

14 Jun 2017
IP court accepts patent infringement action against global medical device company

Although preliminary injunctions in patent filings are rarely easy to obtain, a recent preliminary injunction was swiftly rendered following confirmation by the technical expertise of a European patent attorney, a reputable professor working on medical devices and the court-appointed experts. Full text

03 May 2017
Is withdrawal of appeal different from waiver of action?

The withdrawal of an action allows the withdrawing party to re-file the same action. However, if a party waives an action, it also waives all of its rights to file the same action. The Istanbul 3rd Civil Court of Intellectual and Industrial Property recently examined the difference between withdrawal and waiver. Full text

22 Mar 2017
Direct applicability of European Patent Convention while invalidation actions pending

Article 138/3 of the European Patent Convention is inconsistent with Turkish national patent law, so the IP courts and the Turkish Patent and Trademark Office previously refused to apply Article 138/3 in national invalidity proceedings. However, recently the Istanbul IP Court applied Article 138/3 and accepted claim limitation in national proceedings. Full text

01 Mar 2017
Patent and utility model prosecution under the new Industrial Property Law

The new Industrial Property Law is now in force with new provisions to encourage filing national applications before the Turkish Patent and Trademark Office by setting out a standardised procedure which can be completed in a shorter timeframe. Full text

01 Feb 2017
Compulsory licensing provisions of new industrial property law

Article 129 of the new Law on Industrial Property Rights lists six circumstances where a compulsory licence may be granted. Although the new law is to be welcomed, it appears that for patent holders, Article 129 on compulsory licensing may be particularly problematic and, to some extent, unfair. Full text

18 Jan 2017
Industrial Property Law comes into force

The long-awaited Industrial Property Law has finally come into force. The new law regulates all IP rights in a single code, and also changes the name of the Turkish Patent Institute to the Turkish Patent and Trademark Office. Full text

09 Nov 2016
Is 4X4 equal to 8X4 under trademark law?

The Ankara Third Civil Court of Intellectual and Industrial Property Rights recently ruled on the confusing similarity between the well-known trademark 8X4 and the trademark FASHION 4X4. The court cancelled the Turkish Patent Institute's decision that the trademarks 8X4 and FASHION 4X4 were not confusingly similar under Article 8/1(b) of Decree-Law 556 on the Protection of Trademarks. Full text

05 Oct 2016
Preliminary injunction granted in favour of second medical use patent

The Court of Appeal has established precedent that registered rights must be fully protected until such time as they are invalidated. This rarely causes loss of a party's rights. However, the first-instance courts generally refrain from ruling in favour of a patent, including the grant of injunctions, in an infringement action when invalidation actions are pending on the same patent. Full text

22 Jun 2016
IP Court rejects Court of Appeal view on second medical use claims

In 2014 the Istanbul IP Court held that second medical use claims granted by the European Patent Office under the European Patent Convention 1973 were null and void. Although the Court of Appeal overruled this decision, the IP Court refused to acknowledge the higher court's ruling. The case has now gone before the General Assembly of Courts of Appeal. Full text

15 Jun 2016
New Law on the Protection of Personal Data is on the way

The long-awaited Law on the Protection of Personal Data has been published in the Official Gazette. The law establishes the framework for a central data protection regime. While it will have broad effect across multiple industries, it raises particular concerns for the healthcare industry. Full text

08 Jun 2016
Draft Industrial Property (Rights) Law includes compulsory licence provisions

The compulsory licensing provisions included in the draft Industrial Property (Rights) Law have been hotly debated. As well as encompassing the grounds for compulsory licensing already set out in Turkish law, the draft law broadens each provision, in particular extending the scope for granting a compulsory licence in case of failure to work. Full text

25 May 2016
Turkey poised to adopt doctrine of international exhaustion

The Industrial Commission of the Turkish Grand National Assembly has approved the draft Industrial Property (Rights) Law, meaning that Turkey is poised to introduce the doctrine of international exhaustion of IP rights. Full text

06 Apr 2016
Article 7/1(b) of the Trademark Decree-Law versus the principle of co-existence

Pursuant to the Trademark Decree-Law, a trademark which is identical or indistinguishably similar to an earlier trademark and which seeks to be registered for the same or similar goods and services will be rejected by the Turkish Patent Institute at the first examination stage, without the need for the owner of the earlier trademark to file an opposition. Full text

30 Mar 2016
The new post-grant opposition system

After years of discussions, the new draft IP Law – which is expected to be enacted this year – introduces a post-grant opposition system for national patent filings in Turkey. The new system is being introduced in order to bring Turkish law into line with the European Patent Convention system. However, the post-grant opposition system set out in the draft law has some small differences from the convention system. Full text

23 Mar 2016
Stronger patent protection for patent applicants and owners

A new draft IP law will introduce provisions to strengthen the protection of the rights of both patent applicants and patent owners. Under the law, the protection given to a patent owner will also be given to a patent applicant as of publication of the application. Full text

09 Mar 2016
TPI finally publishes new draft IP law

The Turkish Patent Institute has published the long-awaited draft IP Law. The government has decided to regulate all IP rights in a single act: Book 4 of the act covers patent rights, while Book 5 covers common clauses for all IP rights (ie, trademarks, geographical indications, designs and patents). Full text

16 Dec 2015
New AMTC raises patent-related questions

The Technological Research Council of Turkey and Rolls Royce have signed a cooperation agreement to build the first advanced manufacturing technology centre (AMTC) in Turkey. Although ownership of the IP rights resulting from the AMTC's work depends on the agreement between the parties, certain general rules on patent ownership must be taken into account. Full text

09 Dec 2015
Intepreting the application of the European Patent Convention in Turkey

The European Patent Convention (EPC) is part of Turkish domestic law and, as an international agreement, it cannot be declared unconstitutional. However, in some cases the IP courts interpret the EPC in a way that renders it ineffective. Full text

04 Nov 2015
Court of Appeals evaluates likelihood of confusion for descriptive trademarks

The Assembly of Civil Chambers of the Court of Appeals recently ruled that trademarks containing identical descriptive phrases give rise to a likelihood of confusion. This approach grants exclusive rights over descriptive and generic phrases found in trademarks which could legitimise unfair competition. Full text

21 Oct 2015
Supreme Court overturns IP court decision declaring second medical use patent null and void

The Supreme Court recently issued its first decision on the patentability of second medical use claims in Turkey, marking a milestone for patent holders. The decision has removed the ambiguity surrounding the legitimacy of second medical use patents following a 2014 first-instance decision and upheld the legitimacy of such patents under Turkish patent law. Full text

15 Jul 2015
Square pegs in round holes: invalidation actions against unexamined patents

The Turkish patent regime has a pre-grant opposition system and recognises two types of patent: unexamined patents and examined patents. Unexamined patents can also be converted into examined patents if a request for examination is made during the unexamined patent's seven-year protection period. Full text

10 Jun 2015
IP Court applies European Patent Convention in national invalidity proceedings

In a recent invalidation action against the national validation of a European patent, the patent holder asked the IP Court to delay the proceedings due to ongoing proceedings before the European Patent Office. Rather surprisingly, the IP Court granted this request. The decision is remarkable as it is the first time that a national court has applied Article 138/(3) of the European Patent Convention. Full text

29 Apr 2015
Originator challenges generic drug and ministry price reduction decision

In a recent case a global pharmaceutical company filed a patent infringement action and sought a precautionary injunction against a generic company on the grounds that the generic company had filed an abridged marketing authorisation application for the pharmaceutical which referred to the marketing authorisation dossier of the original product, one of the originator's most profitable drugs in Turkey. Full text

15 Apr 2015
Appeal court rules on status of opposed European patents in Turkey

The 11th Civil Chamber of the Court of Appeals recently issued a remarkable decision regarding European patents validated in Turkey – specifically, on the status of the validation of a European patent in Turkey where an opposition or appeal is pending before the European Patent Office. Full text

25 Feb 2015
IP court interprets scope of Bolar exemption

A recent IP court decision marks the first interpretation of the Bolar exemption with such a narrow scope and the first time that an application for inclusion on the Social Security Institution reimbursement list has been considered an attempt to actually sell a drug. However, it remains to be seen whether the appeal court will agree with the IP court's reasoning. Full text

28 Jan 2015
Constitutional Court: IP rights to be regulated by law

The draft Patent Law is still pending on Parliament’s agenda, but the Constitutional Court recently handed down a strategic decision which revealed a much more serious issue in relation to the existing Patent Decree-Law. In its decision the Constitutional Court annulled Article 158/II of the Patent Decree-Law on the grounds that the right of property should not be governed by decree-laws. Full text

21 Jan 2015
Changing approach of courts to Bolar exemption

Under the Bolar exemption, regulatory acts such as obtaining marketing authorisation and conducting experiments and tests necessary to obtain marketing authorisations are exempt from the scope of patent rights. Although the IP courts used to limit the scope of the Bolar exemption with the grant of the marketing authorisation, this approach has been altered to extend the scope of the acts to be interpreted under the exemption. Full text

10 Dec 2014
IP court finds second medical use claims to be medical treatment methods

The Istanbul IP Court, evaluating a patent infringement claim filed by the patentee of a 'Swiss-type' European patent, has rejected the claim on the grounds that the patent was a "medical treatment method" which should not have been registered under Article 52(4) of the European Patent Convention 1972, and therefore was null and void. The decision has created uncertainty and weakness for second medical use claims. Full text

03 Dec 2014
Draft patent law creates barriers to patent protection

Since Turkey joined the European Patent Convention in 2000, it has had a bifurcated system for national and European patents validated in Turkey. In order to harmonise procedures, a draft patent law amending Decree-Law 551 on the Protection of Patent Rights has been prepared. However, the latest version of the draft law proposes some controversial changes. Full text


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Issue 90