The draft patent law amending the Decree Law numbered 551 Pertaining to the Protection of the Patent Rights (“Patent Decree Law”) is currently the hot button of patent rights in Turkey.
Since Turkey adhered to the European Patent Convention (“EPC”) in 2000, there is a bifurcated system differing for both national and European patents validated in Turkey. In order to harmonize the procedures and eliminate the differences, a draft patent law amending the Patent Decree Law (“Draft Law”) has been prepared. The first version of the draft law was promising, as there were clear provisions on the patentability of biotechnological inventions and second medical use claims. There were improvements in the prosecution phase; namely not limiting the number of patentability examinations to three occasions. Nevertheless, during the discussion of the draft before the relevant commissions, the invited non-governmental organizations revealed that the generic pharmaceutical industry was not content with the new draft law and was conducting serious lobbying activities to remove most of the amendments.
After the negotiations before related commissions the draft patent law was subsequently revised. Although the revised version of the draft patent law contains some substantial improvements, it introduces many amendments conflicting with TRIPS, EPC and PCT.
The primary improvement brought by the Draft Law is introducing a post-grant opposition system, like the one ruled in EPC. The current system does not allow any kind of amendment on the patent after the grant decision. This causes revocation of patents, although they could have survived with simple amendments.
The abolishment of the system of non-examined patents is another important improvement of the Draft Law. Turkey has a so called non-examined patent system, which aims to have a patent application granted without substantive patentability examination. This was foreseen to support the local inventive activity. However it mostly served bad-faith intentions of the possible “infringers”. The main objective behind this amendment is to ensure the production of qualified, high-level patents – this would bring Turkey in line with other signatory member States of the EPC.
Unfortunately, these improvements are limited when compared with the disadvantageous provisions brought in the draft law, the examples of which are offered below.
The provisions on the protection of the second and subsequent medical use claims have been removed from the first version of the Draft Law after the commission meetings. The lack of clear provisions regarding second medical use claims could cause serious problems in practice, as it may be interpreted that the legislator does not intend to provide these protection. Even today some IP courts have a tendency to overlook the facts that the Decree Law does not prohibit protection of such claims and second medical use claims can be protected in Turkey through EPC. These IP Courts interpret that the second medical use claims granted by the EPO before EPC 2000 came in force and validated in Turkey lack proper legal grounding; and therefore have to be invalidated.
The situation with respect to biotechnological inventions is similar. Removing the provisions on the patentability of biotechnological inventions is likely to cause confusion and ambiguity on their enforceability. As such explicit provisions on their patentability are necessary in order to ensure consistency with the EPC and TRIPS, as well as to allow predictability and legal assurance.
Another restriction is brought to the actions that can be taken by the holder of a patent application in case of an infringement. As the Decree Law rules that the patent protection starts as of the date of application and the patent applicant enjoys the same protection provided to a patent holder, there should not be any difference in terms of the scope protection of the patents and patent applications. However, without amending these two principles, the draft law rules that the patent applicant can only file a compensation action, in case of infringement. Besides all conflict and inequality brought with this provision, it is not applicable in practice, because the determination of infringement should be done first for the court to decide on compensation.
Finally, although there are decisions of the IP courts pointing the errors caused by the current practice on the patentability examination limited with three times, the draft law dropped its improved clause in the first version and established even worse wording. The first version of the draft law removed the “three times” limitation. This would not only serve to give equal conditions to an application taking the national route; but also to enact an area ruled by case law. However, after the commission meetings, the “three times” limitation came back and this time even with a clear wording stating that “the number of examinations cannot exceed three times”.
Concluding Remarks
In circumstances where the Patent Decree Law deviates from the international treaties, double standards occur favoring the domestic institutions and procedures. Such situations adversely affect the innovation and R&D environment in Turkey. Especially lack of clear provisions on biotechnological inventions and second medical use claims and other limitations included in the draft patent law will cause doubts and problems in practice. Even today some of the IP Court Judges interpret the absence of clear provisions as the non-protection of these kinds of inventions in Turkey, although they have been granted before the TPI. Leaving these provisions as they are or even worsen them would strength the negative situation.
First published by IAM International report in Jan 14, 2015.