According to the presently valid practice relating to the working requirements in Turkey in accordance with Decree Law No. 551 as well as the Implementing Regulation of said Decree Law in consideration of the new amendments having entered into force on 6 December 1998 upon publication in the Official Gazette no. 23545 of the amending new regulation.
The time period of 3 years for putting a patent/utility model to use in Turkey runs as from the date of publication of the granted patent in the official Patent Bulletin. Below, one may find the presently enforced practice of the Turkish Patent Institute regarding the fulfillment of working requirements in accordance with the Decree-Law No.551.
The following courses of action may be adopted to meet the working requirements of the patent/utility model in Turkey:
1) Filing Certificate of Use with the Turkish Patent Institute
The working requirement of a patent registered in Turkey is met by the effective use of the patent in Turkey. Where such effective use is made in Turkey via production of the patented product/method, that is if the subject of the patent is effectively produced in industry by the patentee and/or by an authorized person/firm located and operating in this country, a Certificate of Use is to be filed within the time period of 3 years with the TPI. This Certificate of Use shall be prepared and filed in Turkish language. We herewith enclose an English version of the Certificate of Use for your information. The Turkish version of this form should be prepared and executed by the Turkish production company, which produces the subject of the patent.
2) Submitting Importation Documents to the Turkish Patent Institute
With the entry into force on 8 December 1998 of the amendments to the Implementing Regulation of Decree-Law No. 551, the importation of products into the country and/or the use of the patent in the manufacturing of the imported products into Turkey is being accepted by the TPI to constitute effective use of the patent embodied in such products.
To this effect, where the patent is presently not effectively produced in Turkey but where the goods embodying said patent are imported into Turkey then it will suffice to file with the TPI the importation document(s) of such goods. The TPI accepts in lieu of a Certificate of Use all such importation documents for evidencing use in Turkey as Certificate of Use documents and these documents are recorded in the Patent Register.
3) Filing documents with the Turkish Patent Institute to prove Legal Excuse for non- use of the invention subject to patent protection
Where the patent is not used due to valid reasons, in accordance with amended Article 39 of the Implementing Regulation of 6 December 1998 the patentee has the right to file with the TPI documents and information explaining the legal excuse of objective nature leading to the non-use of the patent.
4) Recordal and Publication of Offer for patent licensing
Where the patent is presently not effectively worked in Turkey and where the patentee makes no effective use of the patented invention in Turkey according to the provisions of Article 96 of the Decree-Law No. 551, the patentee is to apply to the TPI requesting the publication of an "offer for licensing" in compliance with the Section VI, Chapter III of the Decree-Law No. 551.
It is not necessary to repeat at given intervals the "offer for licensing" as it was the case under the earlier practice valid until June 27,1995. Filing the request before the TPI of the "offer for licensing" by the end of three years period of use running from the date of the publication of the granted patent will suffice for the rest of the patent term in consideration of the provisions of the Article 5 of the Paris Convention on the matter.
As to the costs involved, please refer to the below table. Please be advised that the fees will be converted into the currency at the exchange rate of the invoice date. Furthermore please note that the official fees are re-arranged every year by the Turkish Patent Institute therefore there may be slight changes in the below quoted official fees as of beginning of the new year.
When should Certificate of Use be filed with the TPI?
In case of a production in Turkey of the patented product or of the product obtained via the patented process, it will be sufficient to meet the working requirements of the patent by filing the Certificate of Use with the TPI. The Certificate of Use shall include the registration number and date of the patent, the title of the invention, the date of start of use of the patent, the name, address and signature of the person making the declaration of use and the date of issue of the Certificate. The said Certificate is to be executed and sealed by the Turkish Chamber of Commerce and Industry of which the firm using the subject patent in Turkey, i.e. the patentee or an authorized firm of the patentee, is a member or by any other relevant authority. The production of the patent outside the Turkish territory has not to be considered by the TPI for filing a Certificate of Use. The original form prepared in Turkish language has to be filed with the relevant Turkish Chamber of Commerce and Industry for certification purposes. The relevant attesting authority shall issue the Certificate of Use attesting the working of the patented invention only after the examination of production at the enterprise where the invention is used and shall confirm that the invention is being offered for sale or put into effective use. In case the patent is put into use not by the patentee but by any other party upon authorization/license of the patentee, the Certificate of Use shall be also accompanied with the deed of authorization/license and the same should be executed by both parties and sealed. It is important to note that the deed of Authorization /license to use the patent shall additionally be recorded in the Patent Register if it is to have effect against third parties in good faith.
Which documents are required for recordal of the importation documents before the Patent Register in order to prove use of a patented product or process?
The TPI effects the recordal of the importation documents as use of the patented product or of the product obtained via the patented process only upon receipt of sufficient documentation, which is constituted as follows:
Most importantly, a Customs Declaration for the goods imported by Turkish clients into Turkey obtained from the Turkish Customs Authorities evidencing the entry of the products/process embodying the patent into the Turkish territory is officially required. In the absence of the submission of this Customs Declaration, it is possible that the TPI may not complete the recordal of the importation documents in the Patent Register.
The following documents can also be submitted together with the Customs Declaration:
* A legible copy of an invoice from the patentee to the Turkish firm;
* Transportation certificate;
* Catalogue of the products;
* ATR1 certificate of origin and Customs Declaration from exporting party.
Said documents shall clearly indicate the exporting - importing parties as well as the patent subject to importation into Turkey. If a company other than the patentee himself does the exportation, a declaration of authorization prepared on the company paper of the patentee should be submitted before the TPI. In fact, this documentation establishes and attests the relationship between the patentee and the exporting company where the patentee himself does not effect the exportation.
Does the time period of three years for putting the patent into use can be extended?
The time period of three years ending within three year as from the publication date of the grant of the patent in the Official Patent Bulletin cannot be extended.
Does any document regarding the working requirements can be submitted with the TPI after the end of the time period of three years?
After the expiration of the deadline, any one of the above mentioned four actions or submission of documents regarding the proof of the use of the patent could be submitted too and will be considered by the TPI and recorded in the Patent Register. However, the validity of these documents submitted after the expiration of the prescribed deadline, can only be determined by the court in a court action, which may be instituted by third parties on the grounds of non-use of the patent within the 3 years period.
How does the content of a Declaration of non-use should be formulated in order to be considered as a Legal Excuse by the TPI?
For filing of a Declaration of Legal Excuse, the TPI requires the patentee to indicate the justifiable/legitimate reasons preventing him from putting the patented products/process in use in Turkey. The legitimate reasons of non-use of the patent shall be explained by the patentee himself in a declaration, which shall bear the name and the address of the patentee, the signature of a person authorized to sign on behalf of the patentee firm and needs to indicate absolutely the grant number of the patent, the title of the invention, the deadline of three years and mainly all the technical, economical and legal reasons of non-use of the patent. It is to be noted that according to Article 100 paragraph 2 of the Decree-Law No. 551 on patents all such "technical, economical or legal reasons" of "objective nature" developing "beyond the control and will of the patentee" (such as “the patented product is still in development process and therefore not yet ready for the market”, the need for compliance with standards/ regulatory approval process and the need for new implementations in various fields) are deemed to be legitimate reasons for not working the patent.
It is also required by the TPI to insert into the Declaration of Legal Excuse an approximate time period whereby the patentee indicates when he intends to start the commercialization of the patented product/process in the Turkish market.
Such a Legal Excuse may be evidenced by supporting documents of non-use of the patent as ruled in amended Article 39 of the Implementing Regulation of 6 December 1998. Supporting documents can be copies of any official request filed with the regulatory authorities, i.e. Ministry of Health for obtaining a permission of marketing or any other documents without a confidential character evidencing that the patented product/process is still in clinical tests, experiences, etc.
Will the documents submitted to the TPI with respect to the working requirements be open to the public inspection?
Such documents are not published in the Official Patent Bulletin. However in case a third party is interested with the subject matter of a patent, he can file a request with the TPI by attending to the payment of a related fee and effect the examination of the file which may include such documents. In this way, we can conclude that these documents will be available to the public inspection.
Whereby the patentee has granted an exclusive license for the patent, should the declaration of Legal Excuse prepared by the patentee or the exclusive licensee?
There is no specific article pertaining to this point in the Decree-Law. According to the oral information we received from the responsible chiefs of the TPI and based on our previous experiences, in such a case the patentee or the exclusive licensee can either prepare the declaration of Legal Excuse. However if the licensee prepares the declaration of Legal Excuse, a declaration of authorization indicating that the patentee has granted an exclusive license should also accompanied the declaration of Legal Excuse.
Do the use requirements have to be repeated every year?
The use requirements namely the publication of an offer for licensing, recordal of the Certificate of Use or of the Importation Documents or of the Declaration of the Legal Excuse should be met only once within three years as from publication of the grant. By following one of the above actions, you comply with the use requirements for once and ever, thus these formalities are not required every year.
How does withdrawal of publication of an Offer for licensing affect the use-requirements?
When an offer for licensing is withdrawn, the working requirements of the patent become once again due. Precisely, when the withdrawal of the offer for licensing is in question, the patentee should evidence the use of the patent by other means provided in the Decree Law no. 551, i.e. filing of the Importation Documents, effective use of the patent by filing the Certificate of Use, etc. The patentee can withdraw, at any time, his offer for licensing provided that no person has demanded the patentee for the grant of a license (to use the invention). Withdrawal of the offer takes effect as from the date of filing before the TPI of the petition for the withdrawal of it.
What are the possible consequences of not fulfilling the working requirements?
The minimal specific action a patentee would need to take in order to fulfill the working requirements is the filing of a request with the TPI for the publication of an offer for licensing in the Official Patent Bulletin. In the absence of the prosecution of any course of action regarding the working requirements, it is to be noted that the patent cannot be ex-officio revoked by the TPI on grounds of non-use or failing to meet the working requirements of a patented product and/or process. The patent is not abandoned or invalidated due to the fact that no working requirement is met in the prescribed deadline of three years as from publication date of the grant decision. The possible consequence of not fulfilling the working requirement either by filing a Certificate of Use in case of effective use and /or Importation Documents in case of importation of the patented product/process into Turkey, by filing a Legal Excuse for non-use or filing a request for the publication of an Offer for licensing in case of non-use, would be a compulsory license which is however a procedure not actuated automatically by the TPI but the license being granted by courts upon request of third parties. Please note that the risk of a compulsory license is very rare in Turkey. Until now, there is only one case for which the court has granted a compulsory license.
What is the legal basis for the request of a compulsory license?
A compulsory license can be requested in accordance with the Article 99 of the Decree-Law No. 551 pertaining to the protection of the patent and utility model in Turkey: Compulsory license is (to be) granted where no offer for licensing has been made and where any one of the following situations/conditions materializes:
- Failure to put to use/work the patented invention;
- Dependency of subject matter of patents as mentioned in Article 79 :
This Article concerns the possibility of using the subject matter of a patent with the subject matter protected under a prior patent. The right holder of the prior patent and the right holder of the latter patent may not use the patent of the other party, without his consent, during the term of the validity of his patent. However the right holder of the latter patent may use also the prior patent upon authorization of the right holder of the prior patent or in case he has been granted compulsory license to use said prior patent.
-On grounds of public interest as mentioned in Article 103 :
According to this Article, the public interest constitutes one of the legal basis for the grant of compulsory license, as it is the case in the patent laws of several countries. The Council of Ministers decides for the grant of the compulsory license on grounds of public interest when the subject matter of the patent concerns topics like public health, national defense. Public interest shall be deemed to be involved where putting the invention to use, increasing or, generally spreading, its use or improving same for a useful end are of great importance for public health or national defense purposes. Situations where the non-use of the invention or its insufficient use in terms of quality and quantity, causes serious damage to the country's economic or technical development shall be deemed to also involve public interest.
For the request of a compulsory license by a third party, according to the Article 100 of same Decree-Law "any interested person may after the expiration of the period foreseen in Article 96, request the granting of a compulsory license on the grounds that the patent, at the time of the request, was not put to use or that the delay in the use thereof was not due to justifiable/legitimate reasons or that the use thereof had been suspended during an uninterrupted period of 3 years without justifiable/legitimate reason".
On which basis the rate and the royalty are calculated in the Offer for licensing compared to the compulsory license?
In the offer for licensing, the relation between the parties is a contractual license if they agree on the terms and conditions of the license. Consequently the royalty as well as the rate of same are determined between the patentee and licensee.
Such a license agreement can only be finalized if the parties agree on the terms of such an agreement. Where the patentee and the candidate licensee cannot agree on the amount of the royalty or other contract terms, the matter is referred to the court. At this stage, the court will decide on the royalty and other terms on the agreement, so far as it is necessary. The license granted on an offer for licensing is a contractual license agreement, whereas the compulsory license as is a procedure not actuated by the TPI, the license is granted by courts upon the request of third parties and in such case, the terms as well, the royalty rate are determined by the court.
Does the use requirements of the patent apply also to the utility models?
The Decree-Law No. 551 pertaining to the protection of the patents and utility models states that in case any provisions specifically applicable to utility models are absent, the provisions pertaining to patents as set forth in the subject Decree-Law shall apply likewise, for utility model certificates, provided that they are not incompatible with the characteristic of utility model certificates. Therefore, the use requirements have to be fulfilled within the time period of three years as from the publication date of the grant decision of the utility model in the Official Patent Bulletin.
Should you require further information or clarification on the above matter please do not hesitate to refer back to us immediately. Looking forward to receiving your instructions in this regard well before the relevant deadlines in order to guide you in the appropriate manner.