FAQs on Patents and Utility Models in Turkey on Turklegal IP - Turkish Patent and Trademark Attorneys

FAQs on Utility Model Registrations in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

Which subjects are not deemed as invention and not allowed for protection by utility model in Turkey?

The followings are the subjects which are not deemed as invention and therefore not protectable by utility models in Turkey:

FAQs on European Patent Validations in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

What is the deadline for validating European patent in Turkey?

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

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

No, there is no extension of time for validating European patents in Turkey. The request for validation should be filed within 3 months from the publication of the decision to grant.

FAQs on PCT National Phase Entries in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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:

FAQs on Use/Working Requirement for Patents in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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 three years as from the publication of the patent grant in the Turkish Patent Bulletin (from the date of the publication of the decision to grant in the European Patent Bulletin in the case of European patent) 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.

FAQs on Patent Renewals in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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.

FAQs on Patent Assignments in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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 .

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

Assignment Agreement should be notarized . Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. Legalization by Apostille or Turkish Consulate is not required.

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). TÜRKPATENT 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 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 TÜRKPATENT 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.

FAQs on Change of Name for Patents in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

Is evidence 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 documents be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of an 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 a change of name for some cases only while excluding some other cases registered in the name of the same applicant or registered owner.

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

Yes, Turkish translation of official documents 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 the same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of name changes name of the 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 TÜRKPATENT 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.

Is an evidence 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 the 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 the same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of address changes address of the 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 TÜRKPATENT 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 TÜRKPATENT.

FAQs on Change of Address for Patents in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

Is an evidence 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 the 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?

Is Power of Attorney required for recording change of address?

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

Does TÜRKPATENT 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 TÜRKPATENT.

FAQs on Recordal of Mergers and Acquisitions for Patents in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

Is any evidence 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 documents be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of the 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?

Recordal of a merger or acquisition is not obligatory.

Are there any negative consequences where the merger and acquisition is not recorded duly in the registry?

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 TÜRKPATENT 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?

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 the merger or acquisition

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 TÜRKPATENT provide a certificate of change?

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

FAQs on Recordal of Patent Licenses in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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 TÜRKPATENT?

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 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.

FAQs on Recordal of Pledges for Patents in Turkey

Sun, 13 Nov 2022 15:45:06 +0600

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 TÜRKPATENT?

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: