Reverting a non-examined patent to an examined patent during court proceedings

In a recent case, a Turkish automotive company filed a patent infringement action against a German international automotive company, arguing that a system used in the cars of the German company infringed its non-examined patent granted before the Turkish Patent and Trademark Office (TPTO). In a counter-claim, the German company and its Turkish authorised dealer filed an invalidation action against the non-examined patent in question before the same court. Although at the filling date of the invalidation action the patent was granted as a non-examined patent, during the court proceedings, the patent owner applied to the TPTO to convert it into an examined patent. Consequently, the status of the patent changed from a granted non-examined patent to a pending examined patent application. The plaintiff’s strategy was to jeopardise the pending invalidation action proceedings on the grounds that an invalidation action cannot be filed against a pending patent application.

The court-appointed expert panel concluded that the non-examined patent did not meet the novelty criteria over the prior art documents. The plaintiff objected to the expert report, stating that it had applied to the TPTO to convert the non-examined patent into an examined patent and the outcome of that process should be awaited. The defendant strongly objected to the demand to delay proceedings and emphasised the main procedural rule and established case law of the Court of Appeal, which states that the conditions on the filling date of an action should be taken into consideration when deciding on the merits of the action. Consequently, the court should consider that the patent was granted as a non-examined patent on the filing date of the invalidation action. The defendant also pointed out that the patent owner had applied to the TPTO in bad faith, aiming to delay the outcome of the invalidation action.

The first-instance court accepted the defendant’s arguments and decided to invalidate the non-examined patent without waiting for the finalisation of the examined patent application process and reject the patent infringement action.

On appeal, the Court of Appeal overruled the decision by stating that the first-instance court should have taken into consideration the pending status of the patent application, despite the fact that the status of the patent was “granted” on the filing date of the action.

The first-instance court agreed to comply with the Court of Appeal’s reversal decision and sent a writ to the TPTO inquiring after the latest status of the patent in question. The TPTO informed the court that, since the annual fees had not been paid by the applicant, the patent had become invalid. After confirming the latest status of the patent, the first-instance court rejected the patent infringement action on the grounds that it was filed against an invalid patent. With regard to the invalidation action, it decided that there was no need to render a decision, since that the patent was not valid.

Although the patent owner appealed the decision again, the Court of Appeal upheld the first-instance ruling and rejected the request, highlighting the writ response from the TPTO, which confirmed the latest status of the patent.

Although the new Industrial Property Law, which came into force in 2017, removed the non-examined patent system from Turkish patent law, non-examined patents that were granted under Decree Law 551 and are within the protection period of seven years can still be converted into examined patents as per the decree law.

In light of the Court of Appeal decision, third parties that file patent invalidation actions against a non-examined patent should be prepared for a possible request for conversion by the patent owner.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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