European patents should be validated within 3 months from publication of the decision to grant in the European Patent Bulletin
No, there is no extension of time for validating European patent in Turkey. The request for validation should be filed within 3 months from the publication of the decision to grant.
Whereas the time limit for validation is 3 months from the publication of the decision to grant, Turkish translation of the specifications of European patent can be filed within an additional 3 months - i.e. within 6 months from the publication of the decision to grant - provided that request for validation be filed within 3 months from the publication of decision to grant in the European Patent Bulletin and additional fee for lately submitting Turkish translation (usually 50% of official fee) be paid.
For example, if the decision to grant European patent was published on 01.06.2019, the deadlines will be as follows in the case that the Turkish translation will be submitted lately out of 3-months period.
This is currently a controversial issue in the Turkish law. In the abolished Decree Law for patents (Law No: 551), there was no clear provision for the re-establishment of rights; therefore, it was not possible to re-establish the rights thereunder if the European patent validations had not been performed within the prescribed deadlines.
The new Industrial Property Law, put into force on January 10, 2017, brought the mechanism of re-establishment of rights for the patents into the Turkish patent system (IPL - Article 107(2)), which is very similar to the reestablishment-of-rights provisions of the European patent convention and the implementing regulations thereof -- non-observance of the time limit should take place in spite of all due care, and the request for re-establishment of rights should be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit.
Whereas the Law has introduced the re-establishment rights, it is still not clear whether the provisions for the re-establishment of rights are applicable to the European patent validations. It is known that the Turkish Patent and Trademark Office currently has a rigid stance against the European patent validations deadlines and is reluctant to apply the reestablishment of rights to the European patent validations due to the lack of legal clarity. In brief, this issue stands controversial in the Turkish law and requires a case-law after being judged at the courts of the highest level.
Please always consult us or your Turkish patent attorney to know the latest state of affairs on this issue when you need.
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.
The followings are required:
No, Power of Attorney is not required for European patent validations in Turkey.
No, Turkish translation of the specifications, i.e. description, claims, and drawings, should filed.
Yes, European patent validated in Turkey is published in Turkish Patent Bulletin.
No, Turkey is not a part of London Agreement.
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.
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.
Yes, European patent application with Turkish translation of claims is published in Turkish Patent Bulletin.
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 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.
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.
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.
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.
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.
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.
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.
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:
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.
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:
In the above case, the next annuity can be validly paid till 15 October 2017 without any additional fee.
Do you have further questions about European patent validations in Turkey? Please contact us. We will answer your questions as soon as possible.