What options are open to a patent owner seeking to enforce its rights in your jurisdiction?
If a European patent owner successfully validates its patent in Turkey, it enjoys the same rights as a Turkish patent holder. Thus, it has several options to enforce its rights, the most common of which are:
- sending a cease and desist letter;
- initiating civil and/or criminal proceedings;
- requesting an interlocutory injunction before or together with civil court proceedings; and
- obtaining border seizure at Customs and then initiating proceedings.
Are parties obliged to undertake mediation/arbitration before bringing a case before the courts? Is this a realistic alternative to litigation?
The Turkish legal system does not specifically legislate for alternative dispute resolution. At an early stage of proceedings, the parties are invited to negotiate for settlement, but a positive outcome is unlikely. The Patent Law refers only to arbitration by the Turkish Patent Institute in order to obtain a contractual patent licence for those parties wishing to apply for a compulsory licence.
Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?
The first specialised IP court was established in 2000 and there are now 22 civil and criminal IP courts in Ankara, Istanbul and Izmir. Elsewhere, only appointed courts are responsible for hearing IP matters, including patent cases. Civil and criminal proceedings cannot be heard at the same court.
The judges at the specialised IP courts are trained in IP disputes. Although they are experienced in patent judgments, in principle they have no technical expertise.
The court usually appoints a panel of independent experts to examine all legal and technical facts, which are considered at first instance only.
Are validity and infringement dealt with together, or does your country have a bifurcated system?
As is common international practice, a patent infringement action is likely to face a counteraction by the defendant for invalidation of the patent based on one of the grounds for nullification set out in the Patent Law (Decree-Law 551). Both types of proceeding are generally joined and dealt with simultaneously in the first-instance court where the first action is lodged.
Who may represent parties engaged in a dispute?
Only lawyers registered with one of the Turkish bar associations can represent parties before the courts. Patent attorneys cannot represent a party in legal proceedings or formally appear before the Turkish courts.
To what extent is pre-trial discovery permitted in cases?
Disclosure of evidence is the first step of patent infringement proceedings. In addition to pre-trial discovery, in the absence of sufficient evidence of infringement it is possible for the plaintiff to initiate a separate lawsuit before the civil court to find and secure evidence of infringing acts.
The judge then assigns a panel of experts and assesses the infringing acts without notifying the infringer (ex parte proceedings). The expert report is strong evidence of infringement and can be used later for the main civil and criminal proceedings.
Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?
Turkish patent litigation is always based on written evidence and does not normally involve the hearing or cross-examination of witnesses. However, it is at the court’s discretion whether to accept cross-examination requests.
What use of expert witnesses is permitted?
Expert reports play a major role in Turkish patent judgments. Usually, a panel of independent experts is appointed by the court to examine the technical and legal facts, the costs of which are paid by the plaintiff.
Each panel of appointed experts usually comprises three professionals, (ie, an academic, a lawyer and a patent attorney). A printed copy of the case file is submitted to the experts once the petition exchange and submission of evidence stages have been completed. The experts or their reports can be challenged by either party on reasonable grounds, which then leads to the preparation of a second and generally final report.
However, the parties may adduce external expert reports in support of evidential and legal facts at an early stage of the proceedings. Although these are rarely relied on by the courts, they may be considered by the official experts appointed by the court.
Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?
According to the Patent Law, the scope of patent protection is determined by its claims. Claims cannot be interpreted as being confined to their strict literal wording. When determining the scope of patent protection at the time of infringement, all elements that are equivalent to the elements expressed in the claim(s) are taken into consideration.
Where such an equivalent element performs substantially the same function in a substantially similar manner and yields the same result, that element shall generally be deemed to be equivalent to the elements as expressed in the patent claim(s) at issue.
Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods and software?
Neither business methods nor software constitute patentable subject matter in Turkey. Software can be protected under the Copyright Code. Although the technical effects of software may enjoy patent protection, the scope of such protection is still disputed in Turkey, as in most European countries. Any patent for software characteristics can be subject to an invalidity action due to the non-patentable nature of software under the patent law.
However, it cannot be said that certain patent rights are harder to enforce in Turkey than others, due to the fact that, in principle, each case requires examination by a panel of experts specifically selected and appointed by the court after considering all legal and technical facts and requirements of the case.
To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?
The Turkish courts are not bound by the decisions of other national or foreign courts. Nevertheless, decisions of the Supreme Court of Appeals are authoritative and are usually followed by the first-instance courts.
To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions?
It is at the judge’s discretion to take foreign decisions on the same issues into consideration; such decisions can be submitted as complementary facts and evidence in the early stages of proceedings.
What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?
A defendant can delay proceedings by:
- counterclaiming that the patent at issue is invalid;
- filing objections against experts and their reports, and requesting a new panel of experts and new expert reports; and
- requesting time extensions at every possible stage.
In case of nullity actions, the court will first render a decision on the patent’s validity and then rule on the infringement issue. If the other attempts are not well reasoned, the defendant’s intention to delay is usually spotted by the judge and is not allowed to continue to the next stage.
The plaintiff should be well prepared to submit all facts and evidence in advance, even before the start of proceedings, and should use the time allowed wisely without requiring further extensions during the proceedings.
Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?
According to patent legislation, a patent holder can seek preliminary injunctions before the civil courts in order to forestall an imminent threat of infringement against a wide range of infringing parties, from direct infringers to suppliers, importers, wholesalers and distributors. However, such injunctions are rarely granted unless clear facts and strong evidence of infringement are presented. If this is the case, the plaintiff must provide a financial payment or a letter of bank guarantee as security.
The patent holder may request all possible options when a patent infringement decision is issued, including the investigation and cessation of production of infringing products and confiscation of all infringing products at Customs and other locations where the products are held for commercial reasons. The court will order an expert report to determine the infringement.
Precautionary measures should fully secure the effectiveness of the judgment and provide for the following measures in particular:
- the cessation of infringing acts;
- an injunction to seize within Turkey – including at Customs, free ports or free trade areas – and to keep in custody goods produced or imported that infringe rights conferred by the patent or the means used to implement the patented process; and
- payment of security or a guarantee for damages.
How much should a litigant budget for in order to take a case through to a decision at first instance?
The litigation costs of first-instance proceedings vary greatly, depending on the attorneys’ charging policy, any translation costs, the downpayment required for preliminary injunctions and any extra official fees for the compensation of damages.
The official costs, including experts’ fees, range from €2,000 to €4,000, plus 1.35% of the amount of compensation, if claimed. All of these fees can be recovered by a successful plaintiff. Attorneys’ fees are the main factor in litigation costs, usually ranging between €25,000 and €50,000, but may be much higher depending on the complexity of the case, the disclosure of evidence, any counteraction for invalidity by the defendant and other requirements for court jurisdiction, site visits and special reports from external professionals. These fees cannot be reimbursed.
How long should parties expect to wait for a decision to be handed down at first instance?
The civil first-instance IP courts usually issue a decision within between 24 and 36 months, depending on the notification period that the complaint gives to the defendant, the number of hearings, petitions exchanged, the collection of the defence and evidence, and the number of expert reports issued (see also the options available to defendants seeking to delay a case).
To what extent are the winning party’s costs recoverable from thelosing party?
The losing party must reimburse the winner’s litigation costs at the end of the final court decision, but the total amount is restricted to the official tariff for judicial fees, notification and translation expenses, expert fees and standard attorneys’ fees, and is capped at €3,000.
What remedies are available to a successful plaintiff?
The Patent Law provides for several remedies, such as damages, injunctions and the recall and destruction of infringing goods. If infringement is proven, the court will usually grant damages and an injunction against the infringer.
How are damages awards calculated? Is it possible to obtain punitive damages?
There are three options for calculating damages in Turkey: the infringer’s profits, the patentee’s lost profits and reasonable royalties. However, if a patentee has not fulfilled the use requirement, the damages shall be calculated according to reasonable royalties (see below).
When calculating damages, all circumstances having an effect on the case (ie, the value of the patent, the remaining patent protection term at the time of infringement and the number of licences granted) shall be taken into consideration.
The compensation for moral damages as granted by the courts is of nominal value and mainly symbolic. Punitive damages are not available in civil proceedings, whereas the criminal courts may order a punitive fine of between €12,000 and €23,000.
Under what circumstances might a court grant a permanent injunction? How often does this happen? Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?
Permanent injunctions are often granted to the successful plaintiff at the end of the proceedings.
How long does it typically take for the appellate decision to be handed down?
Any party can appeal the case before the Supreme Court within 15 days of the court decision being issued; this stage takes between 15 and 24 months.
Is it possible to take cases beyond the second instance?
Yes, but this is rare and seldom results in a different verdict. In third and final-instance proceedings the Higher Council of the Supreme Court will issue a decision within six months.
To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?
Most judges have been trained within the framework of a joint project between the Ministry of Justice and the European Commission. As the judges are tough on infringement, they are likely to be pro-patentee when solid facts and supporting evidence are presented.
Is your jurisdiction a signatory to the London Agreement on Translations?
Turkey has not yet signed up to the London Agreement and there is no appointed schedule for negotiations to ratify the agreement.
Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?
No. Turkey is not a member of theEuropean Union.
Are there any other issues relating to the enforcement system in your country that you would like to raise?
A patentee must use its protected invention and must file a certified document to the Turkish Patent Institute within three years of the date of grant. Otherwise, any interested person may request that a compulsory licence be granted. Legitimate excuses for failure to meet this requirement include technical, economic or legal reasons beyond the control of the patentee, which may include officially required clinical test periods or delays in product registration procedures before the health authorities for pharmaceuticals.
Destek Patent Inc
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Ersin Dereligil is a registered European and Turkish patent attorney, and advises on all areas of patent law. Mr Dereligil holds an MSc in chemical engineering from the Middle East Technical University in Ankara. He has lectured on patents and industrial designs at Uludag University for seven years, and also serves as an expert before the Istanbul Specialist IP Court. Mr Dereligil has published more than 50 articles on the Turkish IP system and a book, Understanding Patents For Engineers, and has attended many seminars as a speaker. He is the founding president and a board member of the Licensing Executives Society – Turkey and a founding member of the International Association for the Protection of Intellectual Property Turkey. He is also an active member of other IP associations.
Head of foreign affairs department
Oktay Simsek is head of the foreign affairs department at Destek Patent and a registered Turkish patent and trademark attorney. He is highly specialised in patent drafting, filing and prosecution, and has extensive experience in all IP-related matters. Mr Simsek has advised on all aspects of patent and utility model enforcement, including oppositions, assignments and licensing. He graduated in international relations from Dokuz Eylül University, Izmir, and his particular area of technical expertise is mechanics. Mr Simesk speaks Turkish, French and English.