Turkish practice of grace period for early invention disclosures

As known, inventions should be kept confidential and not disclosed publicly before filing a patent application. As a general rule, any disclosure of invention before filing a patent application can destroy its novelty because it is considered “prior art” to the patent application.

The most patent laws cover a recovery mechanism, which is called “grace period” in patent jargon, to safeguard the novelty of inventions for certain disclosures made within a certain period (mostly 6 or 12 months from the first disclosure”) before patent application.

As allowed in most patent law systems, Turkish Industrial Property Law ("IPL") also provides a mechanism of a 12-month grace period allowing the inventions to still be considered novel for the disclosures made before filing a patent or utility model application.

If an invention has been disclosed, the inventor (not limited to only the inventor(s) but including the right holder(s) for the invention) can still file a patent or utility model application within 12 months from the first disclosure date to protect the invention enjoying the grace period and thereby keeping the novelty of the invention over their earlier disclosures.

The patent or utility model application can be filed anywhere, not necessarily in Turkey, within the grace period. To put it specifically, the inventor can file the application within the grace period in any country and later file the corresponding application in Turkey claiming priority from that application. The entry route can also be via PCT or a European patent system, as long as the first application was filed within the 12-month grace period.

To make use of the right of grace period, there are some requirements in respect of how and by whom the invention has been disclosed; in other words, it is not an unconditional right.

Here are most likely cases for making use of the grace period:

• Inventor has disclosed the invention unintentionally or intentionally, or
• Someone, who directly or indirectly obtained the invention details, has disclosed it.

As you will note, any disclosure by the inventor, voluntarily or not, is enough to enjoy the grace period, which is one of the most liberal aspects of the Turkish IPL. The inventors’ rights to get patents are also protected in case of any unauthorized disclosures, which are most likely made in bad faith.

In addition to two most-likely circumstances above, the disclosures made by the patent offices (any “patent office” or “IP office”, not only Turkish Patent Office) are also covered by grace period in the following circumstances.

• A patent office has made public another application of the inventor which should not have been made public in the actual situation and in which the invention has been also disclosed.
• A patent office has made public an application which has been filed by a third party, who directly or indirectly obtained the invention, without consent of the inventor or without knowledge of the inventor, and which covers the said invention.

As you will note, the scope of the disclosures made by the patent offices are limited, not covering all circumstances. To put it another way, if the patent office performs what is normally and procedurally required to make the invention available to the public, this will not come into scope of the above instances, so it will not be possible to enjoy the grace period.

To conclude briefly, the Turkish patent system includes a sufficiently flexible mechanism that allows the inventors or right holders to still protect their inventions with patents or utility models, even if their inventions have been disclosed before the patent or utility model application in a way.