FAQ - Patents | TURKLEGAL | Turkish Patent and Trademark Attorneys

EUROPEAN PATENT VALIDATIONS

What is the deadline for validating European patent in Turkey?

European patents should be validated within 3 months from publication of decision to grant in European Patent Bulletin

Is there any extension of time to validate European patent in Turkey?

No, there is no extension of time for validating European patent in Turkey. Validation request should be filed within 3 months from publication if decision of grant. Whereas it is 3 months to validate, Turkish translation can be filed within further 3 months adding up to 3 months validate date provided that request for validation be filed within 3 months from grant publication and additional fee (usually 50% of official fee) be paid.

If European patent is not validated within prescribed time limits, is there any possibility for re-establishment of rights?

No, there is no possibility of recovering European patent if the time limits are not met, namely no re-establishment of rights or restoration of rights.

If European patent is not validated in Turkey, what will happen?

If European patent is not validated in Turkey, it will be deemed to be invalid as from the very beginning, namely filing date, in Turkey.

Which documents are required for validation of European Patent in Turkey.

European patent publication page of grant decision (so-called B1 Document), Turkish translation of European Patent Specifications, Declaration signed by Turkish Patent Attorney confirming that Turkish translation is same as the original text, request for validation and payment receipt of official fee required for validation.

Is Power of Attorney required for validating a European patent in Turkey?

No, Power of Attorney is not required for European patent validations in Turkey.

Is it sufficient to translate and file translation of claims to validate European patents in Turkey?

No, Turkish translation of the specifications, i.e. description, claims, and drawings, should filed.

Is European Patent validated in Turkey published?

Yes, European patent validated in Turkey is published in Turkish Patent Bulletin.

Is Turkey a part of London Agreement?

No, Turkey is not a part of London Agreement.

Is it possible to file corrected translation where necessary?

Yes, corrected translation can be filed any time but it should be published in Turkish Patent Bulletin for coming into effect; otherwise, it will not have effect. On the other hand, good faith of third parties who had used the invention subject to European patent before the submission of corrected translation are protected and they are allowed to use the invention provided that the use of invention does not infringe the first version of the Turkish translation.

Do European patents have the same enforceable effect as national patents?

Yes, European patents have the same effect as national patents. Further, European patent applications are deemed as Turkish national patent application after it has been assigned a filing date.

After filing request for provisional protection with Turkish translation, is there any publication?

Yes, European patent application with Turkish translation of claims is published in Turkish Patent Bulletin.

In the course of European patent application being processed before EPO, can it be put forward against third parties in Turkey?

Published European patent applications (not yet granted) can be put forward against third parties provided that provisional protection is demanded by filing claims before TURKPATENT and Turkish translation of those claims are published in Turkish Patent Bulletin, or Turkish translation of claims are notified to relevant third party or parties in Turkey.

For provisional protection, which documents should be submitted and when?

For obtaining provisional protection for European patent application in Turkey, translation of claims, abstract and drawings into Turkish language should be filed and official fee associated with provisional protection should be paid.

What is the effect of grant of European Patent?

European patent is deemed a national patent as from the publication date of decision to grant in European Patent Bulletin and provided that it is validated in Turkey.

Is it required to appoint Turkish Patent Attorney for validating European patent?

If owner of European patent has not place of business in Turkey or has no industrial and commercial activity in Turkey, Turkish Patent Attorney should be appointed for submitting request for validation and Turkish translation.

Which text is considered for determining scope of protection of European patent, i.e. granted text in original language or Turkish translation of granted text?

Turkish translation of granted text is taken into account in determining the scope of European patent. In other words, if Turkish translation of European patent is narrower than original text of European patent, Turkish translation will be considered for protection. There is one exception however, which is that in invalidity actions against European patent, the original text of European patent is considered.

Is it possible to branch off Turkish utility model application from a pending European patent application?

No, there is no possibility to branch off Turkish utility model application from European patent application. In other words, it is not possible to spin off Turkish Utility Models from European patent applications.

Is there any possibility to convert a pending European patent application into Turkish patent or utility model application?

Conversion of a European patent application into Turkish patent or utility model application is only possible under Article 77 (3) (EPC), where a European patent application is not forwarded to the European Patent Office in due time by Turkish Patent and Trademark Office shall be deemed to be withdrawn. In that case, conversion takes place upon request of the applicant.

Excluding that under Article 77 (3) (EPC), it is not possible to convert a European patent application into Turkish patent or utility model application.

Is there any possibility to obtain parallel protection for the same subject matter through national and European patent applications?

Not possible, it is not possible to protect the same invention by both national patent and European patent simultaneously. Turkish Patent Law does not allow double protection, by either patent or utility model or either national patent or European patent at the same time.

In the case of existence of both national patent application and European patent application claiming same priority for the same subject matter, when parallel European patent application is granted and validated in Turkey, corresponding Turkish national patent or patent application become invalid after termination of opposition period before EPO provided that there has not been filed any opposition during the opposition period or European patent is not amended during the opposition period if any opposition is filed.

With the coming into force of New Industrial Property Law on January 10, 2017, are there any special instances for European patent applications or European patents to be taken into account?

European patents nationalized before the coming into force of New Industrial Property Law on January 10, 2017 are required to be handled and processed according to the Abolished Patent Decree Law (Law No. 551). The important instances are the following:

Invalidity actions filed against European patents validated in Turkey before the entry into force of New Industrial Property Law, will be handled under the Abolished Patent Decree Law (Law No. 551).
Use requirements in respect of European patents validated in Turkey before the entry into force of New Industrial Property Law should be performed according to the provisions under the Abolished Patent Decree Law (Law No. 551).

Any infringement action against third parties on the basis of European patents validated in Turkey before the entry into force of New Industrial Property Law, will be handled under New Industrial Property Law.

When European patent is validated in Turkey, are the patent annuities of the previous years are required to be paid; and if any is there any surcharge or additional fee for that?

In case that a patent annuity becoming due and payable within 3 months as from the publication of decision to grant in respect of European patent are paid to TURKPATENT within that term, they are deemed to be validly paid and no additional fee is requested.

Take the following example:

Publication date of decision of grant: 15 July 2017.
Next due annuity: 14 September 2017
The validation deadline in Turkey: 15 October 2017 (calculated from Publication date of decision of grant)

In the above case, the next annuity can be validly paid till 15 October 2017 without any additional fee.

PCT NATIONAL PHASE ENTRIES

Which subjects are not deemed as invention in Turkey?

The followings are the subjects which are not deemed as invention and therefore not patentable in Turkey:

- Discoveries, scientific theories and mathematical methods.
- Plans, rules and methods for mind activities, business activities or games.
- Computer programs.
- Products with aesthetic qualities, literary and artistic works and scientific works.
- Presentation of information.

Which inventions are not allowed for patenting in Turkey?

The followings are the inventions for which patent protection is not allowed in Turkey:

- Inventions which are contrary to public order or morality.
- Essentially biological processes for plant varieties or animal races and plant or animal production, except for microbiological processes or products resulting from such processes.
- All treatment methods, including diagnostic methods and surgical methods, applied to the human or animal body (Swiss-type claims are acceptable).
- Mere discovery of one of the elements of the human body, including the human body and a gene array or partial gene array, at various stages of its formation and development.
- Human cloning, genetic modification of the human germ line, use of the human embryo for industrial or commercial purposes, genetic modifications that may cause animals to suffer without any significant medical benefit to humans or animals, and animals resulting from these procedures.

What is the time limit for the PCT national phase entries in Turkey?

The PCT applications should be typically nationalized within 30 months from the first priority date or the filing date if no priority is claimed. Turkey provides additional 3 months for the national phase entries and thus the PCT applications can be still nationalized within 33 months from the first priority date or the filing date if no priority is claimed provided that additional fee (typically 50% of the national entry fee) is paid.

Which documents and information are required for PCT national phase entries in Turkey?

The followings are required:

- Applicant’s details (name and address)
- Inventor’s details (name and address)
- Description, claims, abstract and drawings, disclosing the invention
- English translation of the International Search Report (ISR), Written Opinion as well as the International Preliminary Examination Report (IPER), if they were issued in a language other than English

All the information and documents can be obtained through PATENTSCOPE if the PCT application has been published when the national phase is performed.

Power of Attorney is not required.

Is Turkish translation of the specifications required for the PCT national phase entry in Turkey?

Turkish translations of the Specifications (description, claims, abstract and drawings) are required for the national phase entry in Turkey. Turkish translation can be filed with the request for national phase entry or within 2 months after filing the request for national phase entry.

Are the applicants required to appoint representative for the PCT national phase entries in Turkey?

The applicants, who are not resident in Turkey, are required to be represented by registered Turkish patent attorneys. Power of Attorney is not required for the representation.

Which fees should be paid for the PCT national phase entries in Turkey?

National entry fee is required to be paid. Also, additional fee (typically half the national entry fee) should be paid if the national entry is performed within 33 months.

When entering into national phase in Turkey, the patent annuities (typically 3rd and 4th year) are required to be paid as well if they are due on the date of entry. If the patent annuities due on the national entry time are not paid, they can be still paid but with a surcharge within 6 months from the date of entry into national phase.

When requesting examination, the applicants are required to pay the official fee for examination.

When do the patent annuities become due?

In respect of the patent application filed on or after 10 January 2017, on which New Turkish Industrial Property Code (Law No. 6979) came into force, patent annuities are due in respect of the third and each consecutive year, calculated from the date of filing.

In respect of the patent applications filed before 10 January 2017 under the Old Decree Law (Decree Law No. 551), patent annuities are due in respect of the second and each consecutive year, calculated from the date of filing.

Which date is taken for the calculation of the due dates for the patent annuities.

The due dates are calculated as from the PCT filing date in Turkey. Actually, the PCT filing date is considered as the filing date of the patent applications nationalized under the PCT.

How long do the patent application proceedings after PCT national phase entry take?

The prosecutions of patent applications (from filing to grant) takes approx. 2-3 years in Turkey.

What is the term for protection for the patents in Turkey?

Patents are valid for 20 years and utility models are valid for 10 years in Turkey provided that annuities are duly paid throughout the lifetime of patent or utility model. There is no possibility to extend the protection term beyond the standard term (no-SPC (Supplementary Protection Certificate) like system).

What are the prosecution stages of the patent applications nationalized through the PCT?

Formal Examination
After filing patent application, TURKPATENT perform formal examination within approx. 2-3 months and notify the applicant accordingly. If there is deficiency, TURKPATENT request the applicant to remove the deficiency within 2 months from the notification of the formal examination. If the applicant does not remove the deficiency within the due date, the application is deemed to be withdrawn.

Substantive Examination
The applicant should file the request for examination within 3 months paying the examination fee from the date of the official notification confirming that the national phase entry has been duly performed. When filing the request for examination, the applicants can submit response to the observations in the international search report and amendments on specifications.

If the national phase entry is performed under Chapter II and the International Preliminary Examination Report (IPER) is positive, the application is directly allowed for grant without further examination.

Office Actions
In the course of the substantive examination, the examiner in charge can issue office actions raising objections regarding the patentability or other substantive issues (lack of unity, clarity etc.) and ask response or amendments within 3 months from the notification of office action. If the applicant fails to reply in due time to any office action, the application is deemed to be withdrawn.

The examiner in charge can issue 3 office actions at most during the examination. As all the office actions are issued in Turkish, translation costs of the office actions into English should be considered.

Grant
If the examiner in charge confirms patentability after substantive examination, TURKPATENT grant and publish decision for patent in the Turkish Patent Bulletin and send a communication of grant to the applicant. At applicant’s option, TURKPATENT can issue Letters of Patent provided that official fee for issuing Letters of Patent is paid by applicant.

Opposition
Turkey applies post-grant opposition system. Any third party can file opposition within 6 months from the publication of the decision for grant. If any opposition is filed, the opposition is handled by the Board of Appeal and the applicant can submit response to the opposition and file amendments during the opposition proceedings where necessary. All the opposition proceedings are handled in written, i.e. there are no oral proceedings.

Is there any possibility to convert patent applications into utility model applications or vice versa?

Patent applications filed through national phase entry of PCT applications can be converted into utility model applications during the proceedings, provided that request for conversion is filed not later than 3 months from the notification of the last office action issued by the examiner or before the grant. For due conversion, search fee should be also paid.

Protection of utility models is not possible for methods, chemicals and pharmaceuticals. The term of protection is 10 years from the filing date.

Is there any way to reinstate the rights in case of the failure to meet the national phase entry time limit?

If the national phase entry is not performed within prescribed time limits, i.e. 30 months or 33 months from the priority date, or filing date if no priority is claimed, the applicant has the right to ask reinstatement of rights in Turkey provided that the conditions prescribed under Rule 49.6 of the Regulations under the PCT are met.

Can I protect my invention by both patent and utility model?

No, it is not allowed to protectthe same invention by both patent and utility model and invention in Turkey.

USE/WORKING REQUIREMENT

Is it obligatory to use or work the patented inventions in Turkey?

Yes, the patented inventions should be put into use in Turkey.

What is the deadline to put into use the patented inventions in Turkey?

The period for using or working a patented invention is typically three years as from the publication of the patent grant in the Turkish Patent Bulletin or four years as from the application date of the patent, whichever is the later. This period is especially important in respect of the compulsory requests, as it is not possible for third parties to request compulsory license before the expiration of this statuary period.

The due date for use is actually relative since the actual due date for use is calculated considering the date of request for a compulsory license. In other words, the use can be performed any time during the lifetime of the patent but should be performed before the request for compulsory licence for avoiding any risk of compulsory license if three years period have already passed. For instance, if the use has been performed at a time after 3 years as from the publication of the patent grant in the Turkish Patent Bulletin but before the date when the request for compulsory license is filed, the use requirement has been deemed to performed.

In the case of European patents validated in Turkey, the initial 3-years period for the use requirement is calculated based on the publication date of the European patent in the Turkish Patent Bulletin (not the publication date in the European Patent Bulletin).

In case that the patented invention is not put into use, are there any prejudices on the patent rights in Turkey?

If the patented invention is not put into use or not used as required, it will not cause to any loss of patent right but the patent will be vulnerable to compulsory license.

On the basis of which can the third parties ask compulsory license regarding the use matter in Turkey?

The third parties can ask compulsory license on the basis of one of the followings;

- Patented invention has not been put into use within 3 years from the grant or was interrupted to be used for 3 years,
- it has not been seriously and actually attempted to put the patented invention into use or,
- the actual use is not sufficient to cover the needs of the national market.

In case of request for a compulsory license, how the proceedings are handled in Turkey?

In case of request for compulsory license, the authorized court will notify the patentee of such request and ask observations/opinion of the patentee within one month as from the date of notification.

Is there any legitimate excuse not to put the patent into use in Turkey?

In assessing the use, market conditions and circumstances beyond the control and will of the patentee is taken into consideration. Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are to be deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons in the nature of constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the patentee.

What are the formalities to meet the use requirement in Turkey?

Non-use or use declarations, as prescribed by the Implement Regulation (Rule 117 (7)) but not the Law, should be filed within three years as from publication of the decision to grant patent in the Turkish Patent Bulletin or four years as from patent application date, whichever is the later. The use and non-use declarations filed for the patents are published in the Turkish Official Patent Bulletin. The patents in respect of which no use is declared are also published in the Turkish Official Patent Bulletin.

The Implementing Regulation, in general terms, specifies that the market conditions and circumstances beyond the control and will of the patentee is considered in assessing the use. Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are to be deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons in the nature of constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the patentee.

The Regulation does not prescribe any positive or negative effect on patent rights if use or non-use declaration is not filed within the prescribed due dates. This point is not sufficiently clear but we, as many other Turkish IP professionals, understand that the main purpose for requiring to file non-use or use declarations is

- to keep the third parties informed of the fact whether the patent is being used or not, on what grounds the use has been or has not been performed, or the legitimate reasons for non-use as generally defined in the Regulation, and
- to encourage the patent holders to use their inventions or to grant licenses if they do not use their patented inventions directly in Turkey.

As for the nature of the declarations, a standard form in the nature of declaration is provided by Turkish Patent and Trademark Office. The form, to be signed by patent attorney on behalf of the patentee, contains the following statements, one of which is selected:

- Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is used.
- Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is not used.

Although the form provides standard statements, an additional declaration can be submitted with the form for reasoning non-use or clarifying use. Furthermore, evidences of use in the case of use, and any documents reasoning the non-use in the case of non-use can be attached to the declaration.

The declaration of non-use can cover a legitimate reason as identified above (e.g. procedures of marketing authorization ongoing). On the other hand, the declaration of use can cover a statement how the patented invention is being used in Turkey, e.g. by being imported to Turkey, or being produced in company or facility X located in Turkey etc., which may be useful to discourage third parties who would attempt to request compulsory license.

Is there any publication in respect of the declarations of use or non-use in Turkey?

The declaration in respect of the use or non-use of the patent is published in the Turkish Patent Bulletin. The patent in respect of which their being used has not been declared within the prescribed time limit is also published in the Turkish Patent Bulletin.

Is it possible to avoid compulsory license by filing offer for license?

Yes, it is possible to file an offer for license to prevent the third parties from requesting the compulsory license if the subject invention is not used or will not be put into use by the patent owner. Offer for license can be always withdrawn.

Are requests for compulsory license frequent in Turkey?

Not actually, they are quite rare in the Turkish jurisdiction.

Is it still possible for the third parties to file request for compulsory request even though declaration for use is filed with Turkish Patent and Trademark Office?

Yes, third parties can still file request for compulsory license. In such case, the patent holder is required to prove that the use had been duly performed within due date.

RENEWALS

Are patent annuities (also known as patent maintenance fees or patent renewal fees) due when patent applications are pending?

Yes, patent annuities are required to be paid during patents are pending.

When do patent annuities start to be paid?

In respect of the patent application filed on or after 10 January 2017, on which New Industrial Property Law (Law No. 6979) came into force, patent annuities are due in respect of the third and each consecutive year, calculated from the date of filing. In respect of the patent applications filed before 10 January 2017 under the Old Decree Law (Decree Law No. 551), patent annuities are due in respect of the second and each consecutive year, calculated from the date of filing.

How due date for an annuity is calculated?

Patent annuities in respect of the coming year are due on the day of the month in which the anniversary of the date of filing falls. For instance, if a patent application was filed on 15 November 2017, the third annuity becomes due on 15 November 2019 and should be paid before this date.

Is it possible to make bulk paymentsat once?

No, it is not possible to pay the annuities in a bulk payment. They should be individually paid where they are due for payment.

Is there any grace period for the payment of a patent annuity?

Yes, there is a grace period and annuities may still be validly paid up to six months after the due date.

In the case of paying the patent annuity in grace period, should any surcharge or additional fee be paid?

Yes, an additional fee equal to 25% of the belated annuity is required.

When does patent or patent application ends if patent annuity is not paid within the prescribed time limits?

If annuity for a patent or patent application is not paid within due date and subsequent six-month grace period, patent or patent application ends as from the due date, namely the day of the month in which the anniversary of the date of filing falls.
For instance, if a patent application was filed on 15 November 2017, the third annuity was not paid in due date, i.e. 15 November 2019, and within the six-month grace period following the due date, i.e. 15 May 2020, the patent application will be deemed to end as from 15 November 2019.

Is there any official notification regarding the termination of patent rights due to lack of payment of patent annuities and until when such notification is issued and sent?

Yes, TURKPATENT issue and send an official notification (lapse notice) informing that patent rights are lapsed. TURKPATENT is obliged to issue such notification at the latest within 1 year as from the due date on which patent rights were lapsed. Following the notification, information regarding the termination of patent rights is published in Turkish Patent Bulletin.

If there any possibility for restoring the rights if patent annuities are failed to be paid within the prescribed time limits?

Yes, it is still possible to restore the rights within 2 months as from the notification date of the lapse notice issued by TURKPATENT provided that the increased annuity fee (called “recovery fee”) is paid. The increased fee means one and a half times the required annuity fee which was not paid in due time.
For restoring the rights, it is not required to submit any reasoned statement regarding the failure to pay the annuity in due time. In other words, a simple request will be sufficient to restore the rights with the payment of the increased official fee.

What will be the consequences if a request for restoring the rights are not filed in due time?

If a request for restoring the rights are not filed in due time, patent rights will be irrevocably terminated. There are no further procedures such as reestablishment of rights (restitutio in integrum).

If patent rights are restored after the termination of patent rights due to failure to pay the patent annuities within the prescribed time limits, are the rights of third parties protected?

Restoration of the patent rights does not affect the acquired rights of third parties due to the lapse of the patent rights. The rights of third parties and their scope are determined by the Court.

Is there any time limitation for the payment of patent annuities?

Patent annuities should be paid during the patent term of 20 years to keep patents in force.

Is there any special requirement for patent annuities in respect of divisional applications?

When a divisional application is filed, annuities of the previous years (calculated from the filing date of parent application) come due and should be paid simultaneously with the filing. In case that the annuities in respect of the previous years are not paid with the filing, it will be still possible to pay the annuities of the previous years within 2 months as from the submission date of the demand for divisional application. If patent annuities of the previous years are not paid within the prescribed time limits defined above, divisional application is deemed to be withdrawn.

Is it required to pay patent annuities for patents of addition?

No, there is no requirement for patents of addition. In other words, patent annuities are not paid for patents of addition.

Is main patent (application) of a patent of addition is lapsed due to failure to pay patent annuities, what will happen to patent of addition?

If main patent (application) of a patent of addition is lapsed to failure to pay patent annuities, patent of addition is converted into independent patent (application) by TURKPATENT .

Is patent of addition is converted into independent patent (application), when and how the patent annuities should be paid?

After the conversion, applicant or patent holder is required to pay the annuities of the previous years (without any additional fee) within 3 months as from the official notification of the conversion. The due dates for annuities are calculated as from the filing date of patents of addition (converted into independent patent) (not the filing date of the main patent).

Is it required to pay patent annuities for secret patents?

No, patent annuities are not required to be paid for secret patents insomuch as they remain secret. If secrecy is removed, patent annuities are required.

Is it required to pay patent annuities if an invention cannot be put into use or use by the right holder due to a legal monopoly?

No, patent annuities are not required to be paid if an invention cannot be put into use or use by the right holder due to a legal monopoly.

When a PCT application is nationalized in Turkey, are payment of patent annuities of the previous years are required; and if any is there any surcharge or additional fee for that?

Yes, when PCT application is nationalized in Turkey, patent annuities of the previous years are paid with the national phase entry without any surcharge (additional fee). If patent annuities of the previous years are not paid together with the national phase entry, they can be still paid within 6 months as from the date of national phase entry, but with a surcharge (additional fee).

When European patent is validated in Turkey, are patent annuities of the previous years are required to be paid; and if any is there any surcharge or additional fee for that?

There is no requirement for paying patent annuities of the previous years after validating European patent in Turkey. Patent annuities for a European patent validated in Turkey are due as from the date of the terms mentioned in Article 86 (2) (EPC) .
In case that a patent annuity becoming due and payable within 3 months as from the publication of decision to grant in respect of European patent are paid to TURKPATENT within that term, they are deemed to be validly paid and no additional fee is requested.

Take the following example:

Publication date of decision of grant: 15 July 2017.
Next due annuity: 14 September 2017
The validation deadline in Turkey: 15 October 2017 (calculated from Publication date of decision of grant)

In the above case, the next annuity can be validly paid till 15 October 2017 without any additional fee.

Where can we reach the schedule of the official fees for patents and utility models?

TURKPATENT shows the schedule of official fees in its official website www.turkpatent.gov.tr. Please click here to see the official fees.

Is there any time interval that official fees are expected to be increased?

Yes, official fees are typically increased at once each year as from January 01.

Is it possible for those that have no residence in Turkey to directly pay patent annuities without using Turkish Patent Agent?

Not possible. Payment of the annuities can be only handled and made by a Turkish Patent Agent.

Which documents are required for the payment of the patent annuities?

There are no documents, e.g. Power of Attorney (PoA), required for the payment of patent annuities.

Does the entity status decrease official fee?

No, legal and real entities should pay the same amount of official fees. Furthermore, any reduction is not allowed in terms of the size of a legal entity.

Upon payment of patent annuities, does TURKPATENT issue any official communication or certificate confirming renewal of patent or patent application?

No, TURKPATENT does not issue any official communication or certificate confirming renewal of patent or patent application.

When a patent or patent application is deemed to be renewed duly?

Upon payment of patent annuities, a patent or patent application is deemed to be renewed duly. No further action, procedures or time is required.

RECORDALS

ASSIGNMENTS

Is there any requirement for disclosing or declaring the consideration in an Assignment Agreement?

Consideration is not necessary in order to validly assign the rights. Even if Assignment is by way of gift, the terms will still be enforceable between the parties. Whereas consideration is not necessary for a valid assignment, it is required for recording the assignment at the patent registry. However, Assignment Agreement is not required to necessarily cover consideration as it can be declared or disclosed separately from Assignment Agreement with the request for recording assignment.

Can consideration be nominal amount? If yes, is there any minimum acceptable amount for recording an assignment?

Consideration can be a nominal amount and there is no specific minimum amount. for recording an assignment at the patent registry?

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording the assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there is more than one patent owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their patent rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over patent rights. In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of the assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent & to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent & to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the patent registry.

Is recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the Patent Register. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in the Patent Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the registry

In case of acceptance of a confirmatory/declaratory assignment, should consideration be declared or disclosed?

Yes, consideration should be still declared or disclosed in case of a confirmatory/declaratory assignment. Consideration can be either declared or disclosed in the confirmatory/declaratory Assignment Agreement, or declared or disclosed with the request for assignment recordal.

Is the original of the Assignment Agreement required?

No actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of the Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

In case of a validated European patent in Turkey, it is possible to record assignment based on EPO Form 2544?

If European patent is assigned before EPO during the Opposition Period or Opposition Proceedings, assignment can be recorded before TURKPATENT by submitting a simple copy of EPO Form 2544 (no translation, notarization, certification or legalization required) without requiring Assignment Agreement and paying official fees for assignment. Please note that assignment before EPO does not result in national recordal automatically.

Is it possible to record an Assignment Agreement comprising multiple patent cases by one assignment request at Turkish Patent and Trademark Office?

Assignments should be individually handled for each case (case by case) and number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the Patent Office.

Is Power of Attorney required for recording an assignment in the registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the patent registry to keep patent in force. Patents remain effective independently from the assignment.

Are official fees payable in order to record a Patent Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one patent within Assignment, official fees should be paid for each case separately.

Is two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment is acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish patent or patent application numbers or European patent numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Patent Bulletin.

Can a pending patent application be assigned?

Yes, a pending patent application can be assigned; there is no requirement for grant or registration of application for the assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how the assignment of patent should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, ie. courts, chamber of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not drafted in Turkish.

Is a patent or patent application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a patent.

Is a patent or patent application pledged, is it still possible to assign patent rights thereon?

Pledge is not an obstacle to assign the rights of a patent.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by Assignee will be sufficient. Furthermore, patent or patent application number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

LICENSES

Which types of licenses are available for recording?

There are two types of license, exclusive and non-exclusive. A license is not exclusive if it is not agreed so in License Agreement. In the case of non-exclusive license Agreements, licensor can use patented invention too and licensor can grant sub-licenses for the same patented invention. In the case of exclusive License Agreements, licensor cannot grant further licenses to third parties, and cannot use patented invention unless it reserves its rights obviously.

Can licensees assign their license rights to third parties?

No, licensees cannot assign their license rights to third parties unless any clause is available for right to assign in License Agreement.

In the case of multiple owners, one of the owners can license patent without having consent of the other owners?

In the case of multiple owners, unanimity of all the owners for allowing third parties to use patent is a must. If all the owners cannot agree on licensing, the Court can grant the authority to grant license to one of the owners in terms of equity.

What is the scope of rights for Licensee in using licensed invention?

Licensee can take any action, unless otherwise agreed, in respect of the use of invention during the terms of patent. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of patent against licensee.

Should a patent application have been granted for granting and recording a license?

No, license can be granted and recorded for a pending patent application.

Is there any requirement for disclosing or declaring consideration in a License Agreement?

There is no requirement to disclose or declare consideration in order to validly license the rights.

Should term of license indicated in License Agreement for recording a license?

Yes, term of license should be clearly indicated in License Agreement. Otherwise, it will not be possible to record license in the patent registry.

Can License be granted unilaterally?

No, license should be done mutually and the express acceptance and declaration of licensee is required. In other words, both licensee and licensor should simply sign License Agreement.

Is there any requirement for legalization or notarization for recording License?

There is no requirement for notarization or legalization of a License Agreement. Simple signatures of licensor and licensee on License Agreement are sufficient to record License in the patent registry.

Is the recordal of a license obligatory? If not, are there any negative consequences where the license is not recorded duly in the patent registry?

Recordal of license is not obligatory. licenses can only have effect against third parties, who are acting in good faith, as from the date of their entry in the patent registry. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in the patent registry.

Is the original of License Agreement required?

No actually, a copy of the License Agreement is sufficient provided that Patent Attorney declares that the copy is same as the original.

Is the translation of License Agreement required to record a license in the patent registry?

Yes, a Turkish translation approved by a sworn translator is required for recording license.

Is it possible to record License Agreement comprising multiple patent cases by one license request at TURKPATENT?

License should be individually handled for each case (case by case).

Is Power of Attorney required for recording license in the patent registry?

Power of Attorney is not required for recording a license.

Is there any deadline to record a license?

There is no deadline and requirement to record license.

Are official fees payable in order to record a Patent License?

Yes, official fees are payable for recordal of a license. If there are more than one patent within license, official fees should be paid for each case separately.

Is two separate license documents of the same content signed and legalized in two different countries are acceptable for recordal of license?

Yes, two separate License documents of the same content signed and legalized in two different countries are acceptable for recording License.

Is a worldwide License Agreement is acceptable?

Yes, it is acceptable provided that License refers to Turkish patent or patent application number(s) therewithin.

Is recordal of license published?

Yes, change of ownership due to License is published in Turkish Patent Bulletin.

Can a pending patent application be licensed?

Yes, a pending patent application can be licensed; there is no requirement for grant or registration of application for license.

Is a patent or patent application seized, is it still possible to license the rights thereon?

Seizure is not an obstacle to license the rights of a patent.

Is a patent or patent application pledged, is it still possible to license the rights thereon?

Pledge is not an obstacle to license the rights of a patent.

Is there any regulatory requirement for the scope or content of an License Agreement?

In a License Agreement, patent or patent application number subject to License, terms of license, and type of license, i.e. exclusive or nonexclusive are required; otherwise, recording license will not be allowed in the patent registry.

CHANGE OF NAME

Is evidence is required for recording a change of name?

Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording change of name. The document should expressly mention the change of name and both old and new names of the applicant/registered owner; otherwise, request for change of name will not be recorded.

Should official document be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of official document sufficient for recording change of name?

Yes, a copy is sufficient for recordal, no original is required.

Are company minutes or proceedings of similar decision for a change of name acceptable?

No, company minutes or proceedings of similar decision for change of name is not acceptable.

Is official certification of notary public regarding change of name is sufficient to record change of name?

Official certification of notary public is not sufficient to record a change of name.

Is it possible to request name change for an entity in respect of specific cases only while excluding the others?

No, it is not possible to record change of name for some cases only while excluding some other cases registered in the name of same applicant or registered owner.

Is a translation of official document for recording change of name required?

Yes, Turkish translation of official document approved by a sworn translator is required for recording change of name.

Does request for a change of name affect all registries of industrial property rights or just the specific registry of patent, trademark or design?

A request for change of name affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of name changes name of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.

Is Power of Attorney required for recording change of name?

No, Power of Attorney (PoA) is not required for recording change of name.

Is it possible to record change of name whilst patent application is pending but not yet granted?

Yes, it is possible to record a change of name without waiting for grant or registration.

Does TURKPATENT provide a certificate of change?

Yes, a certificate of change of name is provided within 1 month approx. following request of change of name.

Is there any official fee required for a change of name?

For change of name, there is no required official fee.

CHANGE OF address

Is an evidence is required for recording a change of address?

No evidence is required for recording change of address.

Is it possible to request address change for an entity in respect of specific cases only while excluding the others?

No, it is not possible to record change of address for some cases only while excluding some other cases registered in the address of same applicant or registered owner.

Does request for a change of address affect all registries of industrial property rights or just the specific registry of patent, trademark or design?

A request for change of address affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of address changes address of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.

Is Power of Attorney required for recording change of address?

No, Power of Attorney (PoA) is not required for recording change of address.

Does TURKPATENT provide a certificate of change?

No, a certificate of change of address is not provided. Recordal of change of address can be easily confirmed through the online system of TURKPATENT .

Is there any official fee required for change of address?

For change of address, there is no required official fee.

In what aspect is updating address in the registry important?

Change of address is not mandatory issue. In one aspect, it is important for the right holder or applicant whose residence of business is abroad, which is that in the case of any court action against the right, the court will directly serve notice of court action to the address of right holder registered in TURKPATENT's registry without serving the same to Turkish Patent or Trademark Attorney of the related right who is recorded as address for service.

MERGER AND ACQUISITION

Is an evidence is required for recording a merger and acquisition?

Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording merger and acquisition. The document should expressly mention the merger and acquisition and both old and new entities.

Should official document be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of official document sufficient for recording merger and acquisition?

Yes, a copy is sufficient for recordal, no original is required.

Are company minutes or proceedings of similar decision for a merger and acquisition acceptable?

No, company minutes or proceedings of similar decision for merger and acquisition are not acceptable.

Is official certification of notary public regarding merger and acquisition is sufficient to record merger and acquisition?

Official certification of notary public is not sufficient to record a merger and acquisition.

Is a translation of official document for recording merger and acquisition required?

Yes, Turkish translation of official document approved by a sworn translator is required for recording merger and acquisition.

Is Power of Attorney required for recording merger and acquisition?

No, Power of Attorney (PoA) is not required for recording merger and acquisition.

Are official fees payable in order to record a merger and acquisition?

Yes, official fees are payable for recordal of merger and acquisition. If there are more than one patent, official fees should be paid for each case separately.

Is it possible to record a merger and acquisition whilst patent application is pending but not yet granted?

Yes, it is possible to record a merger and acquisition without waiting for grant or registration.

Is recordal of a merger and acquisition obligatory? If not, are there any negative consequences where the merger and acquisition is not recorded duly in the registry?

Recordal of a merger or acquisition is not obligatory. Mergers or acquisitions can only have effect against third parties, who are acting in good faith, as from the date of their entry in patent registry. In other words, it is not possible to put forward the rights on the patent against third parties acting in good faith unless and until they are duly entered in patent registry.

In case of a validated European patent in Turkey, it is possible to record merger and acquisition based on EPO Form 2544?

If European patent is assigned before EPO during the Opposition Period or Opposition Proceedings, merger or acquisition can be recorded before TURKPATENT by submitting a simple copy of E EPO Form 2544 (no translation, notarization, certification or legalization required) without requiring merger or acquisition document and paying official fees for merger or acquisition. Please note that recordal of merger or acquisition before EPO does not result in national recordal automatically.

Is it possible to record merger or acquisition comprising multiple patent cases by for request for recording merger or acquisition at TURKPATENT ?

Merger or acquisition should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of merger or acquisition even if requests for recordal of merger or acquisition are simultaneously filed at Turkish Patent and Trademark Office.

Is there any deadline to record an assignment? s

There is no deadline and requirement to record merger or acquisition in the patent registry to keep patent in force. Patents remain effective independently from merger or acquisition.

Is a patent or patent application seized, is it still possible to record merger and acquisition?

Seizure is not an obstacle to record merger and acquisition.

Is Change of Ownership due to merger or acquisition published?

Yes, change of ownership due to merger or acquisition is published in Turkish Patent Bulletin.

Does TURKPATENT provide a certificate of change?

Yes, a certificate of merger and acquisition is provided within 1 month approx. following request of merger and acquisition.

PLEDGES (SECURITY INTEREST)

Can patents be subject of a pledge?

Yes, patents can be pledged.

What kinds of documents are required for recording a pledge?

Pledge Agreement is required for recording a pledge.

If there is more than one pledgee, should pledge be recorded for each pledgee separately?

Yes, pledge should be recorded for each pledgee and official fee for each pledgee should be paid.

Should a patent application have been granted for granting and recording a pledge?

No, pledge can be registered for a pending patent application.

Is there any requirement for legalization or notarization for recording pledge?

There is no requirement for notarization or legalization of Pledge Agreement. Simple signatures of Pledgor and Pledgee on Pledge Agreement are sufficient to record Pledge in the registry.

Is recordal of a pledge obligatory? If not, are there any negative consequences where pledge is not recorded duly in the registry?

Recordal of a pledge is not obligatory. Pledges can only have effect against third parties, who are acting in good faith, as from the date of their entry in patent registry. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in patent registry.

Is the original of Pledge Agreement required?

Not actually, a copy of the pledge Agreement is sufficient provided that Patent Attorney declares that the copy is same as the original.

Is the translation of Pledge Agreement required to record a pledge in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording pledge.

Is it possible to record a Pledge Agreement comprising multiple patent cases by one pledge request at TURKPATENT ?

Pledge should be individually handled for each case (case by case).

Is Power of Attorney required for recording a pledge in the patent registry?

Power of Attorney is not required for recording a pledge.

Is there any deadline to record a pledge?

There is no deadline and requirement to record pledge.

Are official fees payable in order to record a patent pledge?

Yes, official fees are payable for recordal of a pledge. If there are more than one patent within pledge, official fees should be paid for each case separately. Furthermore, if there are more than one pledgees, official fee should be paid for each pledgee.

Is a worldwide Pledge Agreement acceptable?

Yes, it is acceptable provided that pledge refers to Turkish patent or patent application number(s) therewithin.

Is recordal of pledge published?

Yes, pledge is published in Turkish Patent Bulletin.

Can a pending patent application be pledged?

Yes, a pending patent application can be pledged; there is no requirement for grant or registration of application for a pledge.

Is there any regulatory requirement for the scope or content of Pledge Agreement?

In Pledge Agreement, patent or patent application number subject to pledge are required within the Pledge Agreement; otherwise, recording pledge will not be allowed in the patent registry.

In which conditions does a pledge cease?

Pledge ceases in the following conditions:

Extinction or termination of the debt due to any reasons,
If pledge is bound by a condition or a term, when that condition is realized or not realized or its possibility of realization of that condition disappear, and that term is lapsed,
Sales of patent by compulsory execution.

In case of cease of pledge, is it necessary to take any action for removal of pledge in the Registry?

Yes, cancellation of a pledge in the patent registry is only possible if pledgee or pledgees request the removal of pledge from the patent registry. If pledgee or pledgees refrain from removing pledge, pledgor can file a court action in respect of cancellation of pledge and can file request for removal of pledge based on the court decision.

Is pledge of rights obstacle to assign those rights?

No, pledge of rights is not an obstacle to assign those rights.

Does TURKPATENT issue a certificate or letter of pledge?

Yes, a certificate or confirmation letter of pledge is issued.

FAQs - Patents in Turkey