Draft patent law creates barriers to patent protection

Since Turkey joined the European Patent Convention (EPC) 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.

The first version of the draft law was promising, as it included clear provisions on the patentability of biotechnological inventions and second medical use claims. It improved the prosecution phase by not limiting the number of patentability examinations to three occasions. However, during discussion of the draft law before the relevant commissions, the invited non-governmental organisations revealed that the generic pharmaceutical industry was not content with the new draft law and was lobbying for removal of most of the amendments.

The draft patent law was subsequently revised. Although the revised version contains some substantial improvements, it introduces many amendments that conflict with the EPC, the Agreement on Trade-Related Aspects of IP Rights (TRIPs) and the Patent Cooperation Treaty (PCT).

Improvements
The primary improvement to be made by the draft law is the introduction of a post-grant opposition system, such as that included in the EPC. The existing system allows for no amendment of the patent after the grant decision. This leads to the revocation of patents which could have continued with only minor amendments.

The abolition of the system of non-examined patents is another key improvement proposed by the draft law. Turkey has a so-called 'non-examined' patent system, which grants a patent application without substantive examination. This was foreseen to support local inventive activity. However, it mostly served the bad-faith intentions of potential infringers. The main objective behind the amendment is to ensure the production of qualified, high-level patents – this would bring Turkey into line with other EPC member states. 

Issues
Unfortunately, the improvements proposed by the draft law are limited compared to its disadvantageous provisions.

The provisions on the protection of second and subsequent medical use claims were removed from the first version of the draft law after the meetings. The lack of clear provisions regarding second medical use claims could cause serious problems in practice, as it may be thought that the legislature does not intend to provide such protection. Even today some IP courts have a tendency to overlook the fact that the decree-law does not prohibit the protection of such claims and second medical use claims can be protected in Turkey under the EPC. The IP courts have held that second medical use claims granted by the European Patent Office before the EPC 2000 came in force in Turkey lack proper legal grounding, and therefore must be invalidated.

The situation is similar with respect to biotechnological inventions. Removing the provisions on the patentability of biotechnological inventions is likely to cause confusion and ambiguity in regard to their enforceability. Such explicit provisions are necessary in order to ensure consistency with the EPC and TRIPs, as well as to allow predictability and legal assurance.

Further, a restriction has been imposed on the actions that can be taken by the holder of a patent application in case of infringement. As the decree-law provides that patent protection starts as of the date of application and the patent applicant enjoys the same protection as a patent holder, there should not be no difference in terms of the scope protection of the patents and patent applications. However, without amending these two principles, the draft law rules that the patent applicant can file only a compensation action in case of infringement. As well as being unfair, this is inapplicable in practice because infringement should be determined first in order for the court to decide on compensation.

Finally, although the IP courts have issued decisions highlighting errors caused by the existing three-time limit on patentability examination practice, the new version of the draft law dropped the improved clause that was included in the first version and has stricter wording. The first draft removed the three-time limit, which would not only serve to give equal conditions to an application taking the national route, but also codify case law. However, after the meetings, this limit returned with even clearer wording stating that “the number of examinations cannot exceed three times”.

Comment
In cases where the decree-law deviates from international treaties, double standards occur favouring national institutions and procedures. Such situations adversely affect the Turkish innovation and R&D environment. The lack of clear provisions on biotechnological inventions, second medical use claims and other limits included in the draft law will cause issues in practice. Even now some of IP court judges interpret the absence of clear provisions as the non-protection of this type of invention in Turkey, although they have been granted by the Turkish Patent Institute. Leaving these provisions as they are or making them even tougher would worsen an already difficult situation.