Turkish utility models: a good alternative to patents?
Turkish utility model system provides strong protection for inventions since Turkish Industrial Property Law (IPL) came into force in early 2017.
Under the earlier patent law (Decree Law No. 551), Turkish utility models were granted based on simple upon-filing registration requests, which makes its protection capacity unclear. In the pre-IPL period, utility model applications were directly registered after the expiration of the publication period even though it is opposed. This led the old system to be thought unreliable by those in good faith and to be largely abused by those in bad faith.
The new system introduced by the Industrial property law has removed the file-and-register simple registration procedure and brought novelty search condition before granting utility models for inventions. This has substantively increased the protection capacity of Turkish utility models as it has provided a predictable protection ground.
Turkish utility models are actually not granted for pharmaceuticals, chemicals and methods, which narrows down its reach-out to all kinds of inventions. For ones other than these inventions, the utility models have emerged as a good alternative to the patents.
While the inventive step is not required, novelty and industrial applicability are enough to get utility model registration in the Turkish jurisdiction. The prior art search reports are established in terms of novelty and industrial applicability only, which makes the utility models attractive at least for the eligible inventions. The utility models provide the same level of protection as the patents do as the novelty search provides a strong basis for protection under the Turkish IPL.
As known, the inventive step is a challenging and subjective condition for patents. It makes the patenting process longer and difficult due to long substantive examination and opposition (if any) procedures. That is not the case for the utility models as substantive examination for inventive step is not required. A positive novelty search is enough for the applicants to obtain utility model registration in Turkey.
In a nutshell, it can be said that the followings make utility model application process advantageous over patent applications:
- Inventive step is not required
- Substantive examination is not required
- Novelty search is enough
- No opposition proceedings
As you will note, no opposition proceedings are prescribed for utility models unlike the patents. Others can, however, file observations to the novelty search report after its publication. The observations are assessed together with those of the applicant, if any, by the searcher of the TURKPATENT and the final decision is issued. As the decision process is all in one, the registration process is kept shorter.
The utility model applications can be converted into patent applications during the procedures. This conversion-to-patent possibility can be a good option if the search report does not disclose prior art citations destroying the novelty and damaging inventive step when two or more are taken together. In this positive scenario, the applicants can change their way to and look for a patent grant for a longer protection, as the utiltiy models are granted for 10 years at most while patents for 20 years. In this regard, the utility models can also play a role for the applicants to check if there is any chance of success for their inventions to get patent.
The conversion can also take reversely, i.e. from patent application to utility model application. If a patent application is unable to meet inventive step criteria but able to meet novelty, then applicant can look for obtaining utility model for his/her invention asking the conversion of his/her patent application into utility model application before refusal decision. In this case, further search is required after the conversion request is filed.
The utility models also work as being integrated into PCT system, namely it is possible to enter into national phase in Turkey as utility model application. If the International Search Report (ISR) is positive in terms of novelty at least, it is very likely to get 10-years utility model protection for the invention, altough a separate novelty-focused search is required in addition to the ISR.
To conclude, due to their features of fast prosecution and strong protection, the utility models have recently become a good alternative to the traditional patents for the inventions eligible for them in the Turkish jurisdiction.
Note: For more information about Turkish utility models, you may visit our FAQs Page for utility models.