Gün + Partners - Turkey
A recent ruling from a Turkish IP court breaks new ground in the ongoing battle for the European Patent Convention (EPC, 138/3) to be applied to patents in Turkey.
The Turkish IP Law prohibits amendments or limitations of claims or patent documents after a patent has been granted. The only exception to this is changes made by the patentee during the national post-grant opposition phase, which was introduced in 2017.
In line with the introduction of a post-grant opposition procedure, the IP Law prohibits any ruling to be made in a revocation action against a national patent while the post-grant opposition phase is ongoing before the Turkish Patent and Trademark Office. However, the law allows revocation actions to be heard and ruled against the validation of European patents while post-grant oppositions or appeal phases are ongoing before the EPO. Likewise, local courts are not obliged to deem EPO proceedings to be a prejudicial matter – this is entirely at the discretion of the judge.
In practice, some IP courts consider the ongoing opposition or appeal process before the EPO to be a prejudicial matter in view of the principle of procedural economy. This principle dominates civil proceedings and is regulated under Article 30 of the Code of Civil Procedures. Because of this principle, national proceedings may be delayed in order not to undertake unnecessary investigations, as the patent may be revoked by the EPO. On the other hand, some IP courts consider that EPO proceedings take too long and decide not to delay revocation proceedings in order to avoid a serious loss of rights of the plaintiff.
In cases where an IP court refuses to delay revocation proceedings, the patentee may consider limitation of claims in order to survive from a revocation action, which is not possible for national patents granted for national or Patent Cooperation Treaty applications. However, for European patents validated in Turkey, the patentee may – in principle – benefit from the (EPC 138/3, which orders national courts to take limited claims into consideration for ongoing revocation actions in Turkey.
The EPC aims to prevent a rushed revocation of a European patent at the national level and ensures that a patent can be kept valid before the EPO after claim limitations in the opposition or appeal procedures.
However, until recently, most Turkish IP courts refused to apply the convention in revocation actions against European patents and did not allow patentees to limit claims in view of the provision that a national patent cannot be amended after a grant decision. The IP courts refrained from explicitly refusing to apply the EPC in Turkish procedures. They based their decisions on the fact that these courts are bound by the set of claims that are granted before the Patent and Trademark Office, while the office did not accept any claim limitation on a European patent before this was published in the official EPO Bulletin and a Turkish translation was filed before the Patent and Trademark Office.
In a recent revocation action filed against the Turkish validation of a European patent, the patentee filed an auxiliary request with a limited set of claims in the pending EPO proceedings. As the court could not be convinced to delay the revocation proceedings until the end of these proceedings and did not allow the patentee to amend the claims by limitation as per the EPC, another way had to be found to benefit from the convention. to the court thus informed the Patent and Trademark Office of the limited set of claims filed before the EPO and requested that it limit the Turkish claims in the same way as they were asked to be limited before the EPO, without awaiting a final decision from the EPO.
At the filing date of this request before the Patent and Trademark Office, the revocation action had gone through the first expert examination phase, and the experts opined that the patent was invalid as per the granted (not limited) claim set. The office accepted the request on the claim limitation by applying the EPC and sent the limited claim set to the IP court, informing it of the scope of the claims. Based on this information, the court agreed to take the limited set of claims into consideration for the rest of the revocation action and referred the case to a new court expert panel so that the limited set of claims could be examined in view of the nullity allegations made by the plaintiff.
Although both the EPC and the IP Law allow claims to be limited for revocation action purposes, it was a battle for the patent applicant to win this result. The Patent and Trademark Office’s approach and the court’s decision is important for any European patent owner who may fight against a revocation action in Turkey and who may need to benefit from the EPC.