Sponsored Briefing: Recent Highlights on Patents in Turkey
Geographically located between Europe and Asia, Turkey is a strategically placed country with a population of 82 million and a larger youth population than any other EU member state. Taking its place on the list of G20 countries, Turkey aims to position itself in the global value chain and strengthen its export platform by focusing on high-tech patents, including electronic machinery and equipment, auto parts, rail and sea transport, power generation and efficiency projects. In addition, as a natural transportation hub, Turkey is a transitional trade platform between Europe and Asia, which greatly increases the relevance of proper protection of intellectual property rights.
Turkey has substantially harmonized its intellectual property laws with EU law and international agreements such as the Paris Convention and TRIPS, in order to provide effective legal means to improve patent enforcement capacities.
The entry into force of the Industrial Property Code 6769 (Intellectual Property Code) in 2017 was a major development in terms of patent law and the litigation landscape, which profoundly changed the landscape of patent law. intellectual property in Turkey insofar as it affects its legislative, administrative and professional elements.
Turkey has specialized intellectual and industrial rights courts (intellectual property courts) established in Istanbul, Ankara and Izmir, which have jurisdiction over all intellectual property matters, including patent disputes.
In practice, Istanbul is the city in which the largest number of patent disputes are filed, with Turkey emerging as a host country for complex and large-scale multi-jurisdictional disputes.
Standard essential patent litigation (SEP)
Turkey started discussing the licensing of SEP following a decision by the Turkish Competition Authority at the end of 2019, in which the authority for the first time referred to FRAND terms regarding a patented technology . The Competition Council decided on the SEP at the end of 2019 and gave the reasoned decision in early 2020. In its decision, the council complies with EU law and is likely to choose one of the approaches used in case law of the EU for its analysis.
In the current Competition Council decision – for which the reasoned decision was issued in 2020 – the Council decided that there had been a competition violation by the owner of the SEP for abuse of a dominant position in the market. involved – in particular:
- the no-challenge clause so as not to challenge the validity of the patent in the license agreement;
- the fact that the owner of the SEP initiated legal proceedings without any willingness to negotiate; and
- the owner of the SEP acted without transparency in assessing the royalty as anti-competitive behavior.
The current decision is important because it is a landmark decision regarding SEP licensing by the board of directors and is likely to be seen as a benchmark in future SEP litigation.
Patent application at Turkish borders
Compared with trademark enforcement, Customs has limited patent enforcement capacity; however, the number of patent registrations at customs is increasing.
One of the best practices in this regard has been a patent enforcement project (managed by the authors) at Customs which has been part of the global patent protection program since 2013 for patented textile dye molecules.
The patent owner obtained the seizure of more than 100 tons of counterfeit products in Turkey in accordance with the program. Again, on the basis of this program, 50 customs suspension notifications were notified by four customs administrations. The company has filed 14 lawsuits for infringement of its patents and a total of seven invalidity actions against its claimed patents have been received as counterattacks, with five of these cases having already been finalized (all in favor of the patentee) . The results indicate not only the strength of the company’s patents, but also the ability of Customs to enforce patents at borders.
Mediation as an ADR Mechanism for Patent Litigation
Upon ratification by Turkey of the United Nations Convention on International Settlement Agreements Resulting from Mediation (the Singapore Convention) on February 25, 2021, the Singapore Convention is expected to enter into force by October 22, 2021 in Turkey. .
With the Singapore Convention, settlement agreements, which have been negotiated by the conflicting parties and settled international trade disputes, will be enforceable in Turkey. The Singapore Convention allows the enforceability of foreign trade settlement agreements, including patent litigation in Turkey.
It is also important to note that on January 1, 2019, the Commercial Code was amended by which the implementation of the mediation procedure before initiating legal action has become mandatory. The amendment has become mandatory for all types of commercial disputes involving debt collection or compensation claims. Therefore, patent infringement actions involving claims for compensation, disputes regarding the payment or calculation of remuneration for inventions and employee designs, disputes regarding licensing agreements are affected by this change.
In accordance with the Law on Mediation in Civil Litigation, settlement agreements negotiated and jointly signed by the parties are considered to be a document having the nature of a verdict in Turkey.
Life Sciences Patent Litigation
Life sciences patent litigation continues to constitute the largest portion of patent litigation in Turkey. According to a survey, 46% of patent actions filed in Istanbul courts in 2018 and 2019 relate to the life sciences sector. Most pharmaceutical disputes are between the originator and the generic manufacturers. The scope of the Bolar exemption, data exclusivity, storage and use for export purposes, secondary medical use and the scope of biotechnology inventions are matters of debate in the field.