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 Office 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 Office does not examine the EPs at any level or hear any post-granted oppositions.

On the other hand, in the IP Code, there are provisions that we can qualify as contradictions 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, EPs have no such immunity. 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, although they may be amended during EPO opposition proceedings and the amendments are automatically reflected to the Turkish validation. These patents can be directly subjected to invalidation actions without waiting for the opposition proceedings, and even they can be concluded without granting the patent owner the right to amend the claim.

EP owners are advised to request the national Court to delay the trial till to the outcome of the EPO opposition proceedings.  Although these requests are not always accepted on the grounds that the process before the EPO takes a long time, the rights given by the EPC 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 Office, the IP Courts are increasingly inclined to examine such requests and instruct the Office to decide the limitation.

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