Discovery of Evidence Requests and the Scope of Bolar Exemption

Discovery of evidence requests are specially regulated under the Turkish Code of Civil Procedure No. 6100. The discovery of evidence enables determining a fact that is not yet examined in an ongoing action or a fact that will be put forward in a future action.

It must be emphasised that, unlike the US and UK systems, there is no full and frank disclosure procedure under Turkish civil law. In other words, the parties may decide, at their discretion, which documents they will or will not submit to the court; thus, it is not mandatory to disclose all information. Therefore, discovering evidence from a third party via court proceedings is crucial. Article 400 of the Turkish Code of Civil Procedure No. 6100 rules that the party requesting discovery of evidence must have a legal interest, and it is accepted that a legal interest exists if the evidence is lost, or that it will be difficult to depend on that evidence unless it is immediately revealed, except for the cases explicitly stipulated in the law.

Especially in the enforcement of pharmaceutical patents, the patent owner, who is prevented from filing an action due to the so-called Bolar exemption, may use the discovery of evidence tool to complete the preparations of an enforcement action. However, in our opinion, some of the IP courts interpret the limits of the Bolar exception quite broadly and may decide that the Bolar exception continues until the Gx product launches and, within this period, the patent holder cannot take any action. However, as the discovery of evidence is not an action on the merits, it is not blocked by the Bolar exemption and assists the patent holder to discover the evidence of infringement beforehand. The courts may also accept ex parte discovery of evidence upon the patent holder’s request if the conditions under Article 403 of the Turkish Code of Civil Procedure are met. Since the discovery of evidence is not an action as to the merits, no appeal mechanism is available. However, the counter-party may oppose the decision of discovery of evidence on the grounds that the conditions under Article 400 have not been met. This objection is examined and concluded according to the circumstances of the incident by the same court conducting the discovery of evidence.

Speaking of the Bolar exception and discovery of evidence, it would be beneficial to refer to the 16th Chamber of Istanbul Regional Court of Justice’s recent decision on how the requests of interim measure should be evaluated. In terms of the cases regarding intellectual property rights and specifically patent disputes, which are heard by Civil Courts of Intellectual and Industrial Property Rights, decisions on interim injunction play a key role due to the highly technical nature of the issue, commercial reasons, time pressure, or else.

As it is known, the preliminary injunction, which appears as a way out in cases where the definitive protection is not sufficient, and temporary legal protection is needed, can be requested before an action is filed as per Article 390 of the Code of Civil Procedure (“CCP”), or it can be requested after the action is filed. In this context, a preliminary injunction can be defined as a temporary, broad or limited legal protection[1] regulated against the damages that may occur in the legal situation of the plaintiff or the defendant during the proceedings until the final decision. However, it is noteworthy that a recent practice of rejecting the preliminary injunction requests without any examination is adopted by the Istanbul Civil Courts for IP courts contrarily to the legal regulations, definitions and purpose. However, in patent and, more specifically, pharmaceutical patent disputes, where technical examination and evaluation are very critical, and much information has not been made public, it is obvious that there is a need to determine the evidence in order to decide on whether to file the main action in the first place. Again in this direction, while it is stipulated by the clear regulation of the law that the preliminary injunction can be granted before filing an action, it is not lawful to give a decision of rejection by stating that the main action should be filed without making any evaluation as if there was no such provision. It was not possible to grant a preliminary injunction without filing the main action.

It should be kept in mind that either filing a preliminary injunction application or the main action together with a preliminary injunction does not make any difference, since, in both ways, the court should bring the expert report to render their decision on such request considering technical examination is inevitably required in such patent cases. An IP court’s refusal decision was recently appealed before the district court, which was given with this reasoning. The district court dismissed the decision on the grounds that “while the preliminary injunction conditions should be evaluated in line with IP Code Article 159 and CCP Article 389 and the following articles, the decision to reject the preliminary injunction request because it requires a full trial” was not correct, and sent the file back to the Court of First Instance for consideration of the request after receiving an expert report regarding the conditions of the preliminary injunction and the request.

In our opinion, the district court’s decision is extremely accurate and sets a precedent against similar decisions of the IP courts of first instance. In reality, as mentioned above, the preliminary injunction is one of the means of temporary legal protection under Articles 389 et al. of CCP and regulated by the legislator against the damages that may occur in the legal situation of the plaintiff or the defendant in relation to the subject of the case, during the trial that continues until the final decision.

Therefore, the decision to reject the request, stating that the decision on this matter will be made at the end of the full trial, without any examination and evaluation, is an inconsistent practice and has no bearing on the purpose and nature of preliminary injunction protection and the patent protection, which is an intangible property right guaranteed by the constitution. On the other hand, Turkey’s Industrial Property Code also states that “Persons who have the right to file a lawsuit according to this Code may request the court to grant a preliminary injunction to ensure the effectiveness of the final decision to be given, provided that they prove that the use subject to the lawsuit is taking place in the country in a way that constitutes an infringement of their industrial property rights or that serious and effective studies have been carried out for in this way.” Within the scope of all these provisions of the law, ignoring the provisions of the relevant codes by not considering the evidence and the claimant’s request, who collects and submits the evidence based on the request for a preliminary injunction, does not constitute an acceptable practice. Therefore, the latest decision of the district court in this regard has great importance.

[1] Pekcanıtez/ Atalay/ Özekes, Turkish Code of Civil Procedure, Ankara 2015, s. 619

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