Turkey – Patents – Changes in the legislation and practice affecting the requirement and declaration of use and compulsory licence
The new Turkish Code of Industrial Property (Law on Industrial Property) No. 6769 repealing the former Decree-Laws on Patents/Utility Models, Trademarks, Designs, Geographical Indications has entered into force on 10 January 2017 and brings the following changes on the above subjects.
Requirement of Use (Art. 130/2) –Introduction of the “application date” as an alternative date for putting the patent/application to use
According to the new Turkish Code of Industrial Property No. 6769 in force since 10 January 2017 the statutory time period for putting the patent/application to use is
- either 3 years from the publication of the decision to grant
- or 4 years from the application date, whichever is later
- or use shall not discontinue, without a legitimate reason, for an uninterrupted period of 3 years.
The time period for putting the patent application to use may in fact be much longer than the above referred 3 or 4 years as Art 130/2 provides that “use as of the date when the compulsory license request has been made is to be evidenced”. In other words any use made after the above deadlines but before the request of compulsory license will cure non-use after the above deadlines until the date when the request for compulsory license is made. This increases flexibility in favour of the patentee.
As a result of this amendment, according to the new IP Code it becomes possible
- to offer for licence a patent application (Art. 128/1)
- to request a compulsory licence for a patent application (Art. 130/2)
Filing with the T.P.T. Office (T.P.T.O.) of declaration and evidence of use is discontinued as it becomes optional
Under the earlier practice according to the repealed Decree-Law No. 551, the filing of a declaration with the T.P.T.O. was required. Such declaration would either state that the patent could not be used for legitimate reasons of objective of economical, legal or technical nature or state that it was put to use, in which case documentary evidence on such use needed to be filed with the T.P.T.O. With the filing of such a declaration with the T.P.T.O. no compulsory licensing request and procedure could be triggered on ground of non- use. According to the earlier practice, the declaration of use or non-use filed with the T.P.T.O. was not published in the official patent bulletin.
Alternatively the patentee would have the option of making a formal offer for licensing which would be published in the official patent bulletin. This option has been maintained under the new IP Code.
This requirement and practice for filing with the T.P.T.O. the declaration and documentary evidence on use or non-use is discontinued under the new IP Code. The filing or not of such a declaration with the Office becomes optional and is up to the right holder.
However to the difference of the earlier legislation and practice, Article 117/8 of the Implementing Regulation in force since 24 April 2017 provides that in case the right holder chooses to file such a declaration with the T.P.T.O., as to the use or as to the non-use “preferebly for legitimate reasons”, said declaration shall be published in the official patent bulletin.
Where the declaration is to be filed for non-use, it would be preferable, to file it on grounds of “legitimate reasons” making sure that, when needed, the evidence for such “legitimate reasons” can be produced to the Court or to the Competition Board. Likewise, it would be advisable to keep evidences regarding use so that they can be produced in case of need.
As to the format of such declaration, whether it will be a particular form or a box to be ticked on the electronic file or both, the practice of the Office is not yet determined and known especially having regard to the alternative statutory time periods for use, one running from the publication of the decision to grant the other from the application date.
Likewise for those patents/applications having run their statutory time period of use in respect of which no declaration has been filed with the T.P.T.O. the Regulation provides that they will also be published in the official patent bulletin.
Grounds for requesting Compulsory Licence extended
Under the new IP Code the sole sanction for non-use is compulsory licence as no cancellation of patent is possible on ground of non-use.
The new IP Code extends the grounds for requesting compulsory licence by introducing three new grounds.
Article 129 of said IP Code mentions six grounds on the basis of which compulsory licenses may be requested and granted:
- if the patent is not put to use (Article 117 of the Implementing Regulation mentions that “market conditions” and “the circumstances/conditions beyond patentee’s control and will” shall be taken into consideration when assessing non-use),
- the existence of dependent patents indicated in Article 131,
- the public interest described in Article 132,
- othe exportation of pharmaceutical products for addressing public health needs in other countries (This ground is introduced on the basis of the Protocol amending the TRIPs Agreement – Additional Art 31 bis) (New Ground)
- if a plant breeder cannot develop a new plant variety without infringing an existing patent; and similarly if a patentee cannot make use of its patent without infringing an existing plant breeders right (in which case the Law No. 5042 on Plant Varieties will be applied); (New Ground)
- acts of patentee resulting in a restriction, distortion or breach of competition rules (New Ground)
The new IP Code also introduces a new body, the “Competition Board” along side the courts when the ground for requesting “compulsory licence” is the restriction, distortion or breach of competition rules. (Art. 129/2)
The request for compulsory license is heard and decided by the courts or when the ground is the restriction, distortion or breach of competition rules by the Competition Board. However third parties should first request from the patentee/applicant a license under fair commercial conditions before addressing their request to the court. The courts shall request from the patentee/applicant the submission of documents evidencing use. This is where bringing evidence of “legitimate reasons” for not working the patent/application may be needed.
A significant change over the earlier practice being the publication in the official patent bulletin of the declaration filed with the T.P.T.O. as well the cases for which no declaration of use was filed, it would be recommendable to file such declaration with the T.P.T.O. as it can be of precious help not only within the context of a compulsory license request but also within the context of a court action directed against the patent/application.