PATENT AND UTILITY MODEL LAW
Invention; is defined as “the solution to any specific problem in the field of technology”.
Patent; is a document given to inventors in return for explaining their inventions in detail, and it is the right of the inventor to produce, use, sell or import the product subject to the invention for a certain period of time.
Patent Right; is the right related to an intangible property, which has an important place in the traditional terminology and industrial property rights, and which is more relevant to developing countries especially as a means of technology transfer.
Is the accordance of rights to the owners of the inventions to produce and market the product subjected to this invention for a certain period (20 years) on inventions in every field of technology by providing the matters of:
- Being new in Turkey and in the world
- Containing the inventive step
- Applicable to industry
An invention that has not been disclosed in any part of the world by written or verbal promotion or used or explained in any other way before the application date, and is not included in the state of the art, is considered to be new.
Considering the state of the art, an invention that is not obvious to an expert in the related technical field is considered to include an inventive step.
If the invention can be produced or used in any branch of industry, including agriculture, it is considered to be industrially applicable.
Applications with patentability conditions are registered and ensures the recognition of rights such as producing, marketing etc. for the product subjected to this invention to their owners are given a certain period of time (20 years).
The Scope of Protection
The scope of the patent application or the protection provided by the patent is determined by the claims. Besides, the description and illustrations are used in the interpretation of the claims.
Termination of Patent Right
Patent Right is ended when one of the following causes is fulfilled:
- Expiration of the protection period
- The renunciation of patent owner's from the patent right
- Failure to pay annual fees within the stipulated periods
INVALIDITY OF PATENT AND UTILITY MODEL DOCUMENTS
It is included in Article 138 and Article 109 of the Industrial Property Law.
The right to request a Patent or Utility Model Certificate and the provisions regarding extortion are included in Articles 11-15 of Decree Numbered 551.
The last paragraph of Article 165 stating that people who do not object to the publication of the Utility Model Certificate can not file an action for invalidity; with the decision of the Constitutional Court dated 23.03.2004 and numbered 2001/1 and numbered 2004/36, “Article 36 of the Constitution states that “Everyone has the right to a fair trial with claim and defense as a plaintiff or a defendant before the judicial authorities by making use of legitimate means and means. It is stated that "the right to file a lawsuit is included, but since it is included in the second part of the second part of this article, where it is stated that no regulation can be made with the decree laws except under martial law and states of emergency, with the 91st article of the Constitution, it is not possible to make the regulation concerning the right to file a lawsuit with the decree laws, and the mentioned paragraph is It was annulled without considering the matter to be examined in terms of other Constitutional rules, that it should be annulled on the grounds that it is contrary to Article 91 of the Constitution. Therefore, the obligation to make an objection within the legal three-month period, which is a prerequisite for filing a lawsuit for invalidity of the Utility Model Certificate, has been removed, and the invalidation lawsuit has become a lawsuit that can be filed by anyone who has suffered.
The Subjects of Invalıdıty Of Patent And Utılıty Model Documents;
are under the headings below:
- General provisions and invalidation requests regarding the invalidity of the patent document,
- General provisions and invalidation requests regarding the invalidity of the utility model certificate,
- Invalidity of the patent with examination,
- Invalidity of patent without examination,
- Invalidity of the EPO patent,
- Claims that there is no infringement (negative clearance)
The requests for invalidity of patent
It must be proven that;
- The subject of the patent does not have the patentability conditions specified in the patent grant criteria,
- The invention is not defined clearly and fully enough to enable an expert in the technical field to be able to put it into practice;
- The subject of the patent is out of the scope of the application made or the patent is based on an application related to the integrity of the invention or an application made pursuant to Article 109 regarding the usurpation of the patent claim right and exceeds their scope;
- The patent owner does not have the right to request a patent in accordance with Article 85 on the right to request a patent.
The claim that the patent owner does not have the right to request a patent in accordance with Article 85 on the right to request a patent can only be put forward by the inventor or her successors.
In this case, the provisions of Article 109 of this Decree-Law regarding the usurpation of the patent request right shall apply and right holder:
- may request that the previous patent application subject to extortion be accepted as his/her own application and processed, or
- can apply for a new patent for the same invention by taking advantage of the same priority right. (This application will be processed as of the date of the first application. In this case, the application in which the extortion is in question becomes void.) or
- may request the rejection of the application in which the extortion is in question.
Invalidation of the patent can be made for some claims of the patent. This request means partial invalidation of the patent. However, partial invalidity of any request cannot be demanded, and even if it is, any request cannot be partially nullified.
The invalidity of the patent may be requested by the injured parties, the relevant authorities through the Public Prosecutors and the people entitled to request a patent on the same invention.
The invalidity of the patent can be sued during the continuation of the protection period or within five years following the expiration of the right. This provision means that the patent right will be requested up to 5 years after the expiration of the patent right for any reason (such as the expiration of the patent, non-payment of annual fees).
The lawsuit for invalidation of the patent is filed against the person registered as the patent owner in the Patent Registry at the time the lawsuit is filed.
In the event that the invalidity of the patent is decided, the results of the decision are retroactive and the legal protection provided to the patent or patent application is deemed not to have arisen within the scope of invalidity.
Invalidity retroactively, (without prejudice to the claims for compensation for the damage caused by the malicious act of the patent owner),
a – It does not affect the legally finalized and implemented decisions taken due to infringement of a patent before the patent is deemed invalid.
b – It does not affect the contracts made and executed before the invalidity of the patent is decided (however, partial or complete refund of the price paid pursuant to the contract is possible with justified reasons and fairness, depending on the circumstances and conditions).
General provisions regarding invalidity of utility model certificate and invalidation requests
General provisions regarding the invalidity of the Utility Model certificate are included in Article 144 of Industrial Property. When the provisions in this article are evaluated;
For the invalidity of the Utility Model certificate,
It must be proven that;
a – The contradiction of the utility model certificate subject in the criteria for granting the utility model certificate,
b – That the invention, which is the subject of the utility model document, is not clearly and fully defined enough to enable an expert in the technical field to be able to put it into practice,
c – It is stated that the subject of the utility model certificate is out of the scope of the application made for the granting of the utility model certificate or that the utility model certificate is based on an application that has been separated in the sense of a divided application regarding the integrity of the invention or an application made according to Article 12 regarding the usurpation of the patent request right and exceeds their scope,
d – The owner of the utility model certificate does not have the right to request a utility model certificate regarding the right to request a utility model certificate.
Invalidity case of utility model certificate,
Can be opened by;
- Aggrieved third parties or the relevant official authorities through the Public Prosecutor's Office, or
- People entitled to request utility model certificate.
The claim that the owner of the utility model does not have the right to request a utility model can only be put forward by the inventor or his successors. In this case, the provisions of Article 109 of this Decree Law regarding the usurpation of the patent request right shall be applied and the right owner shall
- request that the previous utility model application, which is the subject of the lawsuit, in which the extortion is in question, be accepted as its own application and processed, or
- apply for a new utility model for the same invention by taking advantage of the same priority right (This application is processed as of the date of the first application. In this case, the application regarding extortion becomes null and void.) or
- request the rejection of the application in which the extortion is in question.
The third paragraph of Article 165 of the Decree Law No. 551 states that “In order for the injured third parties and the relevant official authorities to claim the invalidity of the utility model certificate, they must have made an objection in accordance with Article 161 (related to the objection after the publication of the utility model certificate)”. In other words, this provision means that those who do not object to the publication of the utility model certificate application (except those who have the right to request a utility model) cannot file a lawsuit with a request for invalidity.
The invalidity of the utility model certificate can be requested only during the continuation of the protection period, unlike the case in patents. However, in patents, it is possible to file a lawsuit for invalidity within a period of 5 years from the expiration of the right.
The claim for invalidation of the utility model can be made for some claims of the utility model, as in patents. This request means partial invalidation of the utility model. However, partial invalidity of any request can not be demanded, and even if it is, any request can not be partially nullified.
Invalidation Claims of EPO Patent
As it is known, Turkey has been a party to the European Patent Convention since 1 November 2000. According to the provisions of this Convention, the patents which applied to the European Patent Office (EPO) after November 1, 2000 and all research and examination procedures of them are carried out by the European Patent Office, and the patents which Turkey (selected) is included to countries showing the scope of its protection, act like a patent given in Turkey. The cases related to the European Patents being effective in Turkey are explained under the titles of;
- Taking effect the applications made to the EPO and published by the EPO in Turkey,
- An European Patent granted by the EPO becomes effective in Turkey
Taking effect the applications made to the EPO and published by the EPO in Turkey:
In order for a European Patent application filed and published by the EPO to take effect in Turkey, the Turkish translation of the claims of the said application must be submitted to the Turkish Patent Institute and the claims must be published by TPI in the Official Patent Bulletin (T3 type publication). From this stage on, the application in question becomes entitled to temporary protection and enables the applicant to use her rights arising from the application in Turkey. This is not a European Patent granted.
An European Patent granted by the EPO becomes effective in Turkey
In order for a European patent granted by the EPO to be valid in Turkey, in which Turkey is also selected among the countries under protection, the Turkish translation and forms of the specification, claims and summary must be submitted to the Turkish Patent Institute within 3 months from the publication of the patent in the EPO Bulletin, and the fascicle of the granted European Patent must be published by TPI in the Official Patent Bulletin (T4 type publication). From this stage onwards, the European Patent in question is treated as a patent granted in Turkey and enables the patent owner to use the rights arising from the patent in Turkey.
Since the processes of applications submitted to the EPO and published by the EPO are carried out before the EPO, the procedures related to these applications must also be carried out before the EPO and within the scope of the European Patent Convention. The claim that it does not have the criteria for granting a patent regarding a European patent in application can only be submitted to the European Patent Office as a third party opinion. This is not an objection, just a third-person view. The EPO takes this opinion into account if it deems it necessary.
The claim of invalidity of a European Patent granted by the EPO and in which Turkey was selected among the countries under protection can be submitted in two ways;
- filing an objection with the EPO within 9 months from the publication of the patent in the EPO Bulletin,
- filing a patent invalidity lawsuit in Turkey.
In case of the objection before the EPO is accepted, the patent in question becomes invalid, partially or completely, in all countries where it was granted, according to the decision to be made. If the invalidation case of the EPO patent to be filed in Turkey is accepted and the patent is partially or completely invalidated, this decision is valid only for Turkey and the patent continues to be valid in other countries where it was granted.