Impact of EPO Proceedings and EPC Provisions on National Actions

Since Turkey’s inclusion as a member of the EPC, a hot topic has been the enforcement or invalidity of Turkish validation of European Patent(s) (“EP”) while proceedings before the European Patent Office (the “EPO”) are pending.

Once an EP is validated in Turkey, it becomes a national patent. For EPs, the Turkish Patent and Trademark Office (the “TPMO”) seems to have transferred its powers and duties to the European Patent Office; therefore, it functions as an institution that carries out only some procedural transactions. Thus, the TPMO does not examine the EPs at any level, nor it does it hear any post-granted oppositions. On the other hand, under IPL, there are provisions that we can qualify as contradictory or even discriminatory between European Patents and national patents. The first is that while the Courts cannot decide on an invalidation action until the national opposition proceedings conclude, there is no such immunity for EPs. The second is that no amendment to the claim is allowed following the grant decision. EPs validated in Turkey are directly exposed to invalidation actions, in spite of the fact that they may be amended during EPO opposition proceedings, which will be automatically reflected upon the Turkish validation. These patents may be directly subjected to invalidation actions without waiting for the opposition proceedings, and they may even be concluded without granting the patent owner the right to amend the claim.

To avoid any Turkish Court decision as to validity, EP owners are advised to request the Court to await the outcome of the EPO opposition proceedings. Although these requests are not always accepted on the grounds that the process before the European Patent Office takes a long time, the rights given by the European Patent Convention to the patent owner to keep the patent alive should be observed.

Article 138/3 of the EPC is binding upon the national Court to allow EP holders to limit the patent by amendment, and that the patent, as thusly limited, will form the basis for the invalidation proceedings. Although the amendment procedure in Article 138/3 is still not straightforward for the IP Courts and the TPMO, the IP Courts are increasingly inclined to examine such requests and instruct the TPMO to decide as to the limitation.

Last year, upon an application to it, the TPMO accepted the request for limitation of claims by applying the provision of EPC 138/3, and informed the competent Court in the ongoing action about the current scope of the claims, and sent the new limited claim set to the Court. Based on the information provided by the TPMO, the relevant court agreed to consider the limited set of claims in the invalidity action and assigned experts to examine the limited set of claims.

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