Introduction
Who can oppose a patent?
When can a patent be opposed?
What needs to be filed to oppose a patent?
What are the grounds of opposition?
What fees must be paid?
What happens after an opposition is filed?
What are the advantages of opposition?


Introduction

As the first oppositions have started to be received by the Turkish Patent and Trademark Office (TURKPATENT), it would be useful to have a reminder about the legislation underlying the Turkish post-grant opposition.

Under the Industrial Property Code No. 6769 (IP Code), which came into force in 2017, it is possible for a third party to file an opposition to a Turkish patent granted on or after 10 January 2017 (article 99 of the IP Code).

Who can oppose a patent?

Any third party may file an opposition to a granted Turkish patent. More than one person may file an opposition against the same patent.

When can a patent be opposed?

An opposition can be filed within the six-month period following the publication of the grant decision. If the deadline for filing an opposition is missed, there are no remedies such as further processing or re-establishment of rights. Oppositions that are filed later than the six-month period will be rejected. Thus, after this period, the patent can only be challenged before the IP Court.

What needs to be filed to oppose a patent?

The following should happen within the opposition period:

  • a notice of opposition including at least one valid ground of opposition must be filed;
  • the opposition fee must be paid; and
  • the patent opposed and the opponent must be sufficiently identified.

Otherwise, the opposition shall not be deemed to have been filed.

What are the grounds of opposition?

The grounds of opposition are that:

  • the invention is not patentable – that is, it lacks novelty, it lacks an inventive step, it is not industrially applicable or it relates to subject matter excluded from patentability;
  • the invention is not sufficiently described to allow a skilled person to implement the invention; and
  • the subject matter of the patent extends beyond the content of the application as filed.

At this point, it is necessary to add a caveat: requirements such as clarity and unity of invention are not grounds of opposition.

What fees must be paid?

An opposition fee of 805 Turkish lire (approximately $60) must be paid within the opposition period. No time extension or remedies (further processing or re-establishment of rights) to pay the opposition fee are possible.

It should be kept in mind that the most significant cost is for getting legal advice or engaging a legal representative. Thus, the likely overall cost would be much greater than the official opposition fee.

What happens after an opposition is filed?

When an opposition is filed, TURKPATENT informs the patent holder and invites them to respond. The patent holder may submit their counterarguments and, if necessary, make amendments to the patent within three months following the date of TURKPATENT's invitation. After examination of the opposition and the patentee's response by the board at TURKPATENT, the board gives its decision.

Unlike the European Patent Office, it is not possible to have an oral proceedings hearing before TURKPATENT.

There are three possible outcomes of an opposition:

  • the opposition is rejected, and the patent is maintained as granted;
  • the patent is maintained in an amended form; or
  • the patent is revoked.

After that time, if the patent is still alive, its validity can be challenged before the court. Decisions of the TURKPATENT board do not have a binding effect on preventing a third party from filing an invalidity court action. Therefore, the same party may file a court action after the finalisation of the opposition that it has already submitted.

What are the advantages of opposition?

The IP Code, aiming to adopt recent developments in European IP law, introduced to Turkey the post-grant opposition system. The system promises to allow TURKPATENT to grant more valuable patents and thereby to reduce the number of invalid patents.

Before the IP Code, the validity of Turkish patents could only be challenged before the court. As in most countries, an invalidation proceeding before the Turkish IP Court is generally more costly than an opposition proceeding before TURKPATENT, and the opposition proceeding aims to provide a quicker determination of validity.

In addition, the opposition proceedings bring to the patent holder the freedom to amend their claims. Needless to say, the amendment may not extend beyond the content of the application or the patent. On the other hand, according to article 138(4) of the IP Code, during an invalidity action, it is not possible to amend the claims of a granted patent. The article only allows the cancellation of claims. Even partial cancellation of a claim is not possible. Accordingly, the advantage of opposition proceedings for the patent holder is beyond dispute. In this case, in order to increase their chances of revoking the patent, third parties may still prefer to challenge the patent by an invalidation action before the court.

For further information on this topic please contact Basak Yigiter at Deris IP Attorneys by telephone (+90 212 252 6122) or email ([email protected]). The Deris website can be accessed at www.deris.com.