Re-Establishment Of Rights Within The Frame Of The Turkish Patent Law: Legal Practices And Assessments In The Light Of A Latest Decision Of The Turkish Patent And Trademark Office

One of the most important novelties put into force for patents in Türkiye together with the Industrial Property Law no. 6769 (IPL) is the re-establishment of rights.

This article provides a detailed account of the administrative process that began with the invalidation in Türkiye of European Patent No. EP 2084098, owned by Siemens Aktiengesellschaft, certificated in 2011 and filed in Türkiye within the validity time of European Patent (EP), in spite of Publication of Fascicle Amended Upon Opposition to European Patent (B2) of 16.01.2019, on the ground that Turkish translation of the text amended for B2 has not been presented and the fee payable therein for has not been paid to the Turkish Patent and Trademark Office (TÜRKPATENT). Furthermore, the issue of re-establishment of rights is also analysed in-depth within the frame of the applicable laws and regulations and in the light of the pioneer decision taken by TÜRKPATENT in connection therewith.

Within the frame of the Turkish Law, re-establishment of rights is a process that may be requested for maintenance of protection of patent rights if and when failure in compliance with a timing condition leads to rejection of a patent registration application, or its being deemed withdrawn, or invalidation of patent upon and as per third party oppositions, or any other loss of right, though ultimate attention is paid as required by circumstances in the course of patent proceedings, pursuant to article 107(2) of the Industrial Property Law.

What are the time limits for submitting this request? Again, according to article 107(2) of the Industrial Property Law, this request is required to be filed, together with payment of its fee, within two months after disappearance of the cause of failure in compliance with the timing condition, up to maximum one year following the end of the breached period of time, or otherwise, the request is rejected. If the request is accepted, the legal consequences of non-compliance with the time limit will be deemed not to have occurred. However, according to article 115(2) of the Regulation on Implementation of Industrial Property Law no. 6769 ("Regulation"), in the case of failure in compliance with the period of right of priority of twelve months set down in first paragraph of article 93 of the Law, it should not be forgotten that a request for re-establishment of rights is required to be filed within two months following the end of said period of time.

Besides being within the periods of time cited therein, one of the other conditions of acceptability of a request for re-establishment of rights is the failure in compliance with the timing condition though ultimate attention is paid as required by circumstances in the course of patent proceedings, and its being based on an acceptable and reasonable excuse, and this excuse being provable.

It is also similar in Patent Cooperation Treaty (PCT) and European Patent applications. According to PCT article 49(6), if an applicant fails to comply with a period of time defined in article 22 setting down the filing of an international preliminary examination request or article 39(1) setting down the entry into national phase, in the case of its failure in compliance with the timing condition though ultimate attention is paid as required by circumstances, and in the case of loss of rights resulting therefrom, the application may request re-establishment of rights. To take a decision of re-establishment of rights is under the responsibility of the designated or elected Offices handling the international application. If the Office finds that the delay in complying with the time limit was justified due to circumstances or was accidental, it may excuse the delay and allow the applicant to proceed to the international or national phase.

The process of re-establishment of rights for European Patent applications is described in articles 122 and 136 of the European Patent Convention (EPC). As per EPC article 136(1), if the applicant/patent proprietor fails to comply with a specified timing condition though ultimate attention is paid as required by circumstances in the course of patent proceedings, the re-establishment of rights may be claimed. This request is required to be filed within two months after disappearance of the cause of failure in compliance with the timing condition, and in any case within maximum one year following the end of the breached period of time. In addition, the overdue transaction should also be completed within this period of time. However, for any one of the periods of time (relating to the right of priority) set down in EPC article 87(1) and the periods of time specified in EPC article 112a (4) (Extended Opposition/request of review by the Board of Appeals), the request for re-establishment of rights is required to be filed within two months following the end of the breached period of time.

Within the framework of Turkish law, it is necessary to thoroughly examine which patents the provisions for the re-establishment of rights can be applied to. TÜRKPATENT's legal comment is that it is governed by the national laws only after completion of EP validation for European Patent, and if EP validation is not completed in the Office, re-establishment of rights cannot be accepted for losses of rights caused by failure in compliance with this deadline.

Accordingly, given that it is believed and assessed that a claim for re-establishment of rights is applicable on applications/patents having a national effect in Türkiye, if EP validation is not completed in Türkiye within 3 months following the date of publication of the receipt of a certificate for a European Patent (B1), according to TÜRKPATENT, that patent does not have a national effect, and for this reason, a claim cannot be raised for re-establishment of rights.

Furthermore, it is also argued by TÜRKPATENT that as IPL (Industrial Property Law) does not include European Patents and patents exerting a national effect after validation of European Patent in Türkiye before the decision dealt with in this article is taken, EP validity is also subject to the Regulation on Implementation in Türkiye of European Patent Convention Regarding the Grant of European Patents (EPC Regulation), and as the EPC Regulation does not refer to the mechanism of re-establishment of rights, EP validity can also not be made subject to the mechanism of re-establishment of rights.

When considered specifically for the patent discussed in this article, non-inclusion of the mechanism of re-establishment of rights in EPC Regulation is, according to us, not adequate for refusal of use of the right of re-establishment of rights.

In this context, it would be beneficial to delve deeper into the legal grounds underpinning the EPC Regulations, particularly Article 3. The grounds for the relevant legislation include the "Convention on the Grant of European Patents (EPC)" and the "Law No. 4504 on the Approval of the Convention on the Grant of European Patents and its Annexes."

According to the hierarchy of norms set down in Article 90(5) of the Constitution of the Republic of Türkiye, international agreements and treaties duly put into effect have the force of law. That is why in the case of a conflict between provisions regarding fundamental rights (also including the industrial property laws) of national laws and international treaties ratified by Türkiye, the provisions of international treaties must be valid and enforceable.

In light of this information, it is considered that a definitive conclusion on whether the re-establishment of rights can be applied cannot be reached without evaluating the provisions of the "Convention on the Grant of European Patents (EPC)" and the "Law No. 4504 on the Approval of the Convention on the Grant of European Patents and its Annexes."

Articles of EPC which we believe are required to be taken into consideration in the course of this assessment and discussion are respectively articles 64(1), 65, 66 and 67.

Article 64 of EPC states that a European Patent shall confer on its proprietor, from the date on which the mention of its grant is published in the European Patent Bulletin (B1), in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that state.

According to Article 65 of EPC, European Patent proprietors are required to complete "EP Validation" in order for their patents to be deemed valid within the borders of Türkiye.

However, it should be noted that the "EP Validation" process is not actually an "application." According to these provisions, TÜRKPATENT does not conduct any substantive examination or investigation for an invention validated under EP; it only reviews the request in terms of formal requirements. The process carried out under the name of EP Validation is essentially the registration of the granted European Patent in the TÜRKPATENT Registry.

EPC Article 66 is an article relating to equivalence of a European Patent application with a national application. It states that a European Patent application which has been accorded a date of filing shall be equivalent to a regular national filing in the designated Contracted States.

Finally, EPC Article 67 provides for that a European Patent application shall, from the date of its publication, provisionally confer protection upon the applicant. As a matter of fact, during the period from the date of publication of a European Patent application to the date of notification of intention to grant, the patent proprietor may, in its sole option and discretion and in reliance upon a European Patent application not granted and certificated yet, file a provisional protection application in Türkiye only with its claims, whereupon some rights may be conferred upon the patent proprietor in Türkiye.

Setting aside all these legislative reviews, if we return to the subject of the patent process discussed in this article: the European Patent application No. EP 2084098 was granted in 2011, and the EP validation process in Turkey was completed within the prescribed period. On January 16, 2019, the "European Patent Bulletin After Opposition Procedure" (B2) was published; however, the Turkish translation of the revised text for B2 and the associated fee payments could not be completed with TÜRKPATENT. According to Article 14 of the EPC Regulation, this resulted in a loss of rights, and the European Patent has been considered invalid in Türkiye from the outset.

Exactly at this point, the subject matter has been analysed in depth, on the basis of the applicable statutory provisions cited above and the argument of TÜRKPATENT that "in absence of EP validation process, the European Patent will not have acquired the status of a national patent and will be deemed invalid and null ab initio in Türkiye". Specifically for the patent referred to in this article, as EP validation process has been completed in Türkiye after publication of B1, even though EPC Regulation does not include the mechanism of re-establishment of rights, the subject European Patent has acquired the status of a national patent in Türkiye, and therefore, a claim may be raised for the re-establishment of rights. Based on this evaluation, the legal process was initiated.

For eligibility for a claim for re-establishment of rights, the specified time limit must not have lapsed, and the required period of time must not have been complied with though ultimate attention is paid as required by circumstances in the course of patent proceedings, and it must be based on an acceptable and reasonable excuse, and this excuse should be provable. During the aforementioned legal proceedings, aside from proving why the mechanism of re-establishment of rights is applicable on the patent in dispute, the satisfaction of these conditions is also clarified in details.

Within this framework, information is given about general modus operandi of the Intellectual Rights team of the applicant being an international corporation, the distribution of duties therein, the software program used, and the qualifications of employees thereof, and very detailed explanations are made as to under which conditions and how this mistake is made, and information, documents and statements of proof are provided about each of them.

Our claim for re-establishment of rights is then directly refused by TÜRKPATENT Patent Department in reliance upon proviso of Article 14¹ (Text Amended Upon Opposition (B2) or Restriction (B3) Process) of EPC Regulation.

Thereupon, an appeal was filed with the Re-Examination and Evaluation Board (REEB) requesting a review of the decision made by the Patent Department, and the reasons why the patent in question should be evaluated under the Industrial Property Law (IPL) were reiterated. In response thereto, REEB, in spite of non-acceptance of our claim for re-establishment of rights, has accepted our opposition, and judged that the Patent Department must examine and assess our claim within the frame of IPL and the mechanism of re-establishment of rights defined in IPL.

The justification of this decision of REEB is significant. It is stated in the justification of decision that as per Article 11 of EPC Regulation, as the conditions listed in Articles 12.² and 13.³ are satisfied, the subject European Patent is required to be considered as a patent granted in Türkiye as from the date of publication of the advertisement of grant of European Patent, and as per provisions of Temporary Article 1(4)⁴ of IPL, the pertinent provisions of IPL, not the provisions of the Repealed Decree-Law, should be applied on the claim covered by the opposition.

Then, Patent Department has, in line with decision of REEB, examined our claim for re-establishment of rights, but has once more given a negative decision without any reason other than "inadequacy of information and documents proving the grounds and reasons of the claim for re-establishment of rights, as required to be filed together with the claim for re-establishment of rights". As we did not consider the evidence and documents submitted to the Office to be "insufficient," we filed another appeal against the Office's decision and submitted it to REEB.

Following a detailed review by REEB, our request for the re-establishment of rights was accepted, ensuring the continuation of the patent protection in question. In its acceptance decision, REEB examined and acknowledged that on the day the error occurred, there was an unusually high workload compared to a normal day, and a security patch was applied to the software, which caused a software error.

However, in the justification of its decision of Acceptance, REEB has not made a mention of our arguments, specifically emphasized by us, that international agreements and treaties duly put into effect have the force of law, i.e. the related articles of EPC should be valid and applicable. As in the justification of the previous decision of REEB, TÜRKPATENT refers to the satisfaction of conditions set forth in Articles 12 and 13 of EPC Regulation as the ground for acceptance of a European patent as a patent granted in Türkiye with effect from the date of publication of grant of European patent as per Article 11 of the same Regulation.

Completion of this long and challenging process, started in 2019 and finished in 2023, has been satisfactory for both the patent proprietor and us.

On the other hand, we could not come to a mutual agreement on the arguments that international agreements and treaties duly put into effect have the force of law, and as per provisions of article 64 of EPC for EP validation, a claim for re-establishment of rights can be filed according to article 107 of IPL. In this case, the decision of acceptance of our claim has been taken as a result of REEB's making an assessment different from that of Patent Department, due to our process being related to B2 publication.

Aside from the legal comments, it will be useful to briefly mention about the general justification of IPL as well:

The Industrial Property Law (IPL) includes numerous provisions that are aligned with international agreements and EU legislation. We believe that implementing regulations to allow EP validations—regardless of B1, B2, or B3 distinctions—to benefit from the re-establishment of rights provisions would serve the overarching purpose of this general rationale.

As a conclusion, we would like to underline that particularly in the case of loss of rights due to B2 and B3 publications, to apply the mechanism of re-establishment of rights must absolutely be assessed and considered as long as the ultimate attention has been paid therein. Similarly, also in the case of loss of rights due to B1 publications, it may be useful to take the applicable laws and regulations into consideration and not to renounce from the mechanism of re-establishment of rights.

Since IPL, which came into force in 2017, is considered relatively new, new regulations and case law are emerging as new legal needs arise. Indeed, it is possible to establish a more efficient and contemporary industrial property system not only through the law itself but also through the emergence of various concrete cases and the resulting new legal demands and case law.

Footnotes

1. Regulation on Implementation of EPC in Turkey – Article 14: In the event that a European patent is amended as a result of an opposition according to provisions of article 101 of the Convention or is restricted upon demand of patent proprietor according to provisions of paragraph (b) of article 105 of the Convention, the provisions of articles 12 and 13 of this Regulation are applied for submission to the Office of a Turkish translation of the amended text, together with payment of a translation publication fee, and for publication thereof, within three months following the date of publishing of this amendment in the European Patent Bulletin. If a Turkish translation of the amended text is not submitted to the Office in a timely manner, together with payment of a translation publication fee, or an additional time fee is not paid together with said fee, and an additional time is not requested, then, the subject European Patent is deemed invalid and null ab initio in Turkey.

2. Regulation on Implementation of EPC in Turkey – Article 12: A Turkish translation of European Patent Fascicle containing description, patent claims, and if any, technical drawings is submitted to the Office by the related European patent proprietor or its patent attorney within three months following the date of publishing of the European patent.

3. Regulation on Implementation of EPC in Turkey – Article 13: The Office publishes the translation submitted in accordance with article 12 of this Regulation. Then, the European Patent the Turkish translation of fascicle of which is published is announced in the Official Patent Bulletin.

4. Industrial Property Law – Temporary Article 1 (4): For patents and useful models granted in reliance upon provisions of the former legislation, the provisions of this Law, save for articles 99, 138 and 144, and fifth paragraph of article 113, and eighth paragraph of article 121, are applied.

5. http://www.sinaimulkiyetkanunu.com/genel-gerekce/

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