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.
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?
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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.
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?
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.