The new IP Law no. 6769 came into force as of 10th of January 2017. Important changes have been made and attention is needed. The new law promises a fast, fair and much more authentic process. Some of those changes are quite useful and expected for a long time and a few changes will directly influence international clients and the whole monitoring system for patents and designs. Recent changes can be summarized as follows;\r\n
\r\nA Totally New Stage is Introduced: Post-Grant Opposition\r\n\r\nUpon publication of a grant decision, a third party may file an opposition against a granted\r\n\r\npatent within six months of its publication. Once the opposition is filed, the Turkish Patent\r\n\r\nInstitute notifies and invites the patentee to submit its opinion or to amend its patent\r\n\r\napplication. Both the opposition and the patentee’s opinion and amendment are examined by the Board to be established at the Turkish Patent Institute. The composition of the Board and other procedures will be clarified with the implementing regulations.\r\n
Abolition of the Seven-Year Patent System
\r\nThe Law abolishes the short term patent of seven years which could be obtained without substantive examination. The new law brings the request for a substantive examination mandatory. Otherwise, the patent will be deemed as withdrawn. But the patents previously filed before January 10, 2017 will be considered in the under the previous regulation which means seven-year patent protection without substantive examination is still available just for these applications. With the enactment of the Law, any invention may only be registered as a patent if it is new, has an inventive step, and has an industrial application.\r\n\r\nUtility Model System Re-Adapted\r\n\r\nThe Law introduces a compulsory novelty search for utility model applications also and applicants may file amendments during the registration proceedings. Post grant opposition will not be available for utility models.\r\n\r\nSearch Request is Available at Same Time of Filing\r\n\r\nThe applicant may request search report at the same time of filing but it’s optional. If the search report is not requested with filing, the applicant has 12 months-time for the same.\r\n\r\nAbolition of 2nd and 3rd Examinations\r\n\r\nJust one examination may be requested by the applicant since 2nd and 3rd examinations are not available any more. Instead of 2nd and 3rd examinations, TPO gives an amendment right to the applicants to correct/re-arrange the patent in necessary way and every applicant will enjoy three times amendment right until they have the patent granted.\r\n\r\nDivisional Application Request is Available at Any Stage\r\n\r\nThe applicants may file a divisional application anytime before grant without prerequisite to have a unity of invention objection during examination.\r\n\r\nRe-Institution of Lost Rights\r\n\r\nRe-institution of lost rights because of missing due dates, including annuity payments being partly facilitated in exceptional cases. The holder can request re-institution of lost rights by paying the official recovery fee and keep the patent alive within two months from the notification date of invalidation decision.\r\n\r\nTurkish Patent Office Recently Approved as an International Search Authority\r\n\r\nThe Turkish Patent Office recently approved as an international S/E Authority by WIPO which is expected to gradually facilitate the workflow regarding to foreign search and examining authorities.\r\n\r\nAddress, Legal Entity And Company Name Changes Will Influence Entire IP Portfolio\r\n\r\nPursuant to the new IP Law a change of address, legal entity and company name will be reflected in the entire IP portfolio of an applicant, which comprises trademarks, industrial designs, patents and utility models registered or pending in the name of the same owner.\r\n\r\nIn Detail\r\n
|Previous Regulation||New IP Law|
|Any formal deficiency should be completed within 3 months.||Any formal deficiency should be completed within 2 months instead of 3 months.|
|Search request should be filed after the completion of formal examination and within 15 months from the filing date.||Search request may be filed at the same time of the application and within 12 months from the filing date without any official notification. For utility models, search request should be filed within 2 months after receiving official notification showing the completion of formal examination.|
|After the completed search report an applicant should make a system choice within 3 months.||After the completed search report an applicant should request the examination within 3 months.|
|In case the examination report is negative, the applicant should submit the opinions/amendments within 6 months and request the 2nd examination.||In case the examination report is negative, the applicant should submit the opinions/amendments within 3 months. In case, TPO requests some amendments before the grant decision of the patent, the applicant should complete the amendments within 2 months.|
|The applicant has a right to oppose against any decision of TPO apart from the grant decision within 2 months of the received notification.|
|Annuity payments start at the beginning of 2nd prospective year of any patent.||Annuity payments start at the end of 2nd prospective year of any patent.|
|It’s necessary to submit use evidences within 3 years from the publication date of grant to prevent any possible compulsory license requests of third parties.||It’s still necessary to submit use evidences within 3 years from the publication of grant but in case the applicant stops using the patent during more than 3 years, the compulsory license will be again in force.|
|Patents and utility models were subject to be opposed by third parties but TPO wasn’t considering the oppositions in approving the patent to grant. TPO just was collecting the received arguments to be declared in case of any lawsuit before the court, where is necessary, and where is requested by the complainant.||Patents are subject to an opposition within six months from its grant publication. Utility models are subject to an opposition within 3 months from the publication of search report. TPO will consider the received oppositions to decide whether to reject the opposed patents or not.|
- Any applications filed before the publication of the new law will enjoy the earlier regulations in force.
- Trademark litigation allows for civil and/or criminal proceedings whereas civil proceedings is available for patent and design litigations.
- Registered IP rights will not constitute a legitimate defense against any infringement claim brought by the owner of the earlier IP right.
- The new intellectual property law introduces the “international exhaustion of rights principle”, thereby replacing the earlier “national exhaustion principle”.