In abstract
This text explores IP litigation in Turkey and solutions some key questions for the jurisdiction.
Dialogue factors
- Rising developments and important coverage updates in recent times
- Any new industry-based or firm developments beginning to emerge?
- What’s the newest motion in damages awards and the way damages are calculated?
- How one can make greatest use of discussion board purchasing
- What are the 5 key ‘have to is aware of’ for the jurisdiction?
- Injunctions at a look
Referenced on this article
- European Patent Conference
- Industrial Property Legislation
- Modification of the Civil Litigation Legislation
- IP Legislation No. 6769
In a landmark determination on 21 October 2021, the Normal Meeting of the Courtroom of Cassation performed a complete analysis of the problem of second medical use patents granted by the European Patent Workplace (EPO) being challenged often by generic drug producers.
Previous to the introduction of article 54(5) within the European Patent Conference (EPC) 2000, which permitted purpose-limited product claims to embody a identified product used for a novel and ingenious therapeutic objective, patent safeguarding for a longtime drug employed in a novel and ingenious therapeutic software was achievable solely via purpose-limited course of claims within the Swiss-type format.
Türkiye grew to become a member of the EPC in 2000, and its nationwide patent regulation largely aligns with EPC provisions. However, the nationwide regulation doesn’t explicitly handle the patentability of second or subsequent medical use claims.
Within the topic case, the primary occasion IP court docket acknowledged Türkiye’s EPC membership however didn’t think about the EPO’s Enlarged Board of Enchantment’s G5/83 case regulation as binding for Türkiye. Due to this fact, the primary occasion IP Courtroom dominated {that a} patent revealing the second medical use of a identified substance ought to be revoked. The court docket argued that this patent was granted earlier than the EPC explicitly addressed the patentability of second/subsequent medical use claims.
Because of an enchantment, the Courtroom of Cassation reversed the choice of the primary occasion court docket, in favour of the patent holder. As the primary occasion court docket resisted this determination, the case was referred to the Normal Meeting of the Courtroom of Cassation.
The Normal Meeting rejected the decrease court docket’s declare that EPO case regulation was not binding for them. It was confused that, as Türkiye had accepted each the EPC 1973 and EPC 2000 provisions, evaluating the validity of European Patents concerning first and second medical makes use of ought to think about EPC provisions and case regulation. The Normal Meeting concluded {that a} patent can’t be invalidated solely primarily based on it being a second medical use patent granted in the course of the EPC 1973 interval.
A choice regarding necessary arbitration for worker innovations for the willpower of an affordable payment was issued by the Council of State on 26 November 2020. The request for annulment and suspension of the execution of the associated provisions was additionally mentioned.
A lawsuit was filed earlier than the IP Courts, aiming to find out the quantity of compensation for an invention made by the worker, as the corporate had filed a patent software for the invention however didn’t remunerate the worker. The native court docket dismissed the case, citing that rules prescribed arbitration for the willpower of compensation.
The worker contested this determination on the premise that the necessary arbitration provisions have been unconstitutional, arguing that these provisions, which lacked a authorized foundation within the Industrial Property Legislation, disadvantaged the courts of their jurisdiction, and that the matter ought to be resolved via judicial proceedings. Subsequently, the worker initiated an annulment lawsuit earlier than the Council of State to problem the necessary arbitration provisions and request the suspension of their execution.
The Council of State discovered that the Regulation On Worker Innovations, Innovations Realised in Greater Training Establishments and Innovations Arising From Publicly Supported Tasks, with the second sentence of article 11/2, the phrase ‘via arbitration’ in article 24/1 and article 24/4, went past what’s allowed by the regulation. The Council of State emphasised that the final jurisdiction of the courts can solely be abolished by regulation, and that another means equivalent to rules by administrative our bodies are usually not acceptable in keeping with articles 9, 36 and 141 of the Structure.
Rising developments
The main IP regulation in Türkiye is Mental Property Legislation No. 6769, which regulates the IP system together with patents. Because of reflection of the Bolar exemption within the Legislation No. 6769, a major variety of court docket filings in Türkiye encompass lawsuits searching for willpower of non-infringement of pharmaceutical patents by licence functions for generic merchandise. Generic pharmaceutical corporations purpose to have the ability to launch their generic merchandise as quickly because the patent expires, by acquiring a non-infringement declaration in the course of the licensing interval earlier than the Ministry of Well being.
Vital coverage updates in previous years
Legislation No. 7251 dated 28 July 2020 on the Modification of the Civil Litigation Legislation, applied a clause that allows an extension within the deadline to contest an skilled’s findings. This addition is a direct response to the sensible difficulties beforehand skilled owing to the constrained two-week window initially allotted. The revision within the regulation now gives a possible doubling of this era, thereby enabling a month-long period for events to draft and submit their detailed assessments or objections.
This legislative refinement was motivated by the popularity that the complexities concerned in dissecting and difficult skilled evaluations typically require greater than the preliminary two-week interval, particularly when delving into specialised or extremely technical content material. The regulation now explicitly states that events can petition for extra time if the complexity of the fabric makes well timed response impractical or inconceivable.
The modification within the regulation is very pertinent to patent disputes, which, by their nature, demand technical scrutiny and might profit from the extra time for a radical response to skilled findings. The expectation of the practitioners is that related amendments are made for different procedural steps in patent circumstances that require complicated technical examinations at each degree.
Any new industry-based or firm developments beginning to emerge?
As talked about above, owing to the incorporation of the Bolar exemption into Legislation No. 6769, a substantial portion of authorized circumstances in Türkiye revolves round lawsuits that search to ascertain the absence of patent infringement in generic pharmaceutical merchandise via licensing functions. Generic pharmaceutical corporations pursue the purpose of having the ability to introduce their generic merchandise instantly upon the expiration of the patent by securing a declaration of non-infringement in the course of the licensing part with the Ministry of Well being.
What’s the newest motion in damages awards and the way damages are calculated?
Ethical, materials and reputational damages can be found to a profitable plaintiff. Ethical damages are claimed as a set quantity by the plaintiff initially in civil proceedings. On the situation that the quantity initially claimed by the plaintiff is just not exceeded, the decide determines the quantity of ethical damages by discretion.
Materials damages are calculated by court-appointed specialists in observe. Materials damages, precise damages and revenue loss will be claimed. As per the IP Legislation No. 6769, materials damages will be calculated primarily based on the next strategies that the plaintiff is free to select from:
- the affordable licence payment that the infringing social gathering would have paid if had the precise been used lawfully via a licence settlement;
- the doable revenue of the patent proprietor with out competitors of the infringer; and
- web revenue made by the patent infringer.
As calculation of damages by court docket specialists extend court docket proceedings considerably, there may be an development that patent house owners select to say ethical damages solely, which doesn’t require skilled examination.
How one can make greatest use of discussion board purchasing
In Türkiye, specialised IP courts exist in 4 main cities, together with Istanbul, Ankara, Izmir and Antalya. In jurisdictions the place no specialised IP courts exist, common courts of first occasion deal with IP disputes.
As per the IP Legislation No. 6769, IP courts in Ankara have the only real jurisdiction over lawsuits towards the selections of the Turkish Patent and Trademark Workplace. No discussion board purchasing is on the market in that respect.
For civil lawsuits to be filed by the IP proper holder towards third events, that would come with infringement actions, courts of the plaintiff’s residence, courts of the placement that the unlawful act passed off and the courts of the placement that the results of the unlawful act will be seen have jurisdiction. From these three boards, if out there, it could be acceptable to decide on the discussion board the place a specialised IP court docket exists.
For civil lawsuits to be filed by third events towards the IP proper holder, which incorporates invalidation actions, courts of the defendant’s residence have sole jurisdiction. No discussion board purchasing is on the market in that respect.
What are the 5 key ‘have to is aware of’ for the jurisdiction?
Türkiye is a celebration to the Patent Cooperation Treaty settlement. Türkiye can also be a celebration to the EPC Settlement however not a member of the European Union. Due to this fact, Türkiye is just not a part of the Unified Patent Courtroom (UPC) and unified patent (UP) system. The UPC/UP system is anticipated to have solely oblique results in Turkish patent observe.
There are specialised IP courts in Türkiye dealing with IP disputes. Nonetheless, there are not any courts devoted to patent circumstances. Judges and different judicial employees of the IP courts are usually not required to have any technical background, and in observe not one of the judges have such specification. For technical facets in all patent circumstances, the system depends on skilled examination dealt with by court-appointed impartial specialists.
Patent infringement is just not a felony offence underneath Turkish regulation. Civil proceedings can be found for patent infringement circumstances and foremost actions take round 4 to 5 years to finalise. Due to this fact, preliminary injunctions play a key position in patent infringement circumstances.
As a sensible precondition for preliminary injunctions and as an vital instrument for documentation of the present standing of proof, evidence-securing proceedings are largely utilized in Turkish patent observe. Proof-securing proceedings are ex parte court docket actions on the finish of which, an skilled report is issued documenting the standing of proof via an skilled examination both on web site, on-line or on paper inside a court docket file.
Below the Regulation on Implementation of the European Patent Conference Regarding Grant of European Patents in Türkiye, a European patent software designating Türkiye shall take pleasure in safety and shall be enforceable in Türkiye, ranging from submitting of translation of the claims with the Turkish Patent Workplace or from the date the opposite social gathering is made conscious of the invention. This is a crucial good to know for European patent candidates who wish to implement their functions in Türkiye and presumably to say damages.
Injunctions at a look
Preliminary injunctions – are they out there, how can they be obtained? | Preliminary injunctions can be found and will be granted by civil courts to stop imminent infringement. The patent proprietor should show critical threat of lack of rights or jeopardy of realisation of claims on the finish of the lawsuit with out the existence of a preliminary injunction. The infringement and validity of the patent should be very clear with none doubt. Typically, in patent circumstances preliminary injunctions are hardly ever issued and the timeframe is a number of months. |
Everlasting injunctions – are they out there, how can they be obtained? | Everlasting injunctions can be found and will be obtained via a foremost motion earlier than civil courts on account of a finalised judgement confirming infringement. |
SEP injunctions – are they out there, how can they be obtained? | A obligatory licence will be obtained via court docket motion for an SEP if the patentee carries out actions distorting, hindering or limiting competitors whereas a patent is getting used. There isn’t any case regulation in Türkiye on SEP injunctions. In 2019, the Turkish Competitors Authority issued an administrative determination on SEPs in Vestel v Philips (19-46/790-344) and utilized the FRAND standards. |
Is cost of a safety/deposit essential to safe an injunction? | A preliminary injunction will be issued with out cost of any safety/deposit. For enforcement of such injunctions nonetheless, courts usually order cost of a safety/deposit. |
What border measures can be found to again up injunctions? | Customs seizures are theoretically out there for suspected infringements. In observe, customs authorities would implement court docket choices in patent infringement circumstances. |