Scope and Ownership of Patents
Types of Inventions Protectable
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
According to the Industrial Property Act (IPL), the following are considered non-inventions:
- scientific discoveries and theories;
- mathematical methods;
- patterns, methods and rules for performing mental acts, playing games and doing business;
- computer software;
- literary, scientific and aesthetic works or creations; and
- information presentations.
The following inventions are considered unpatentable:
- inventions contrary to public order or morality;
- inventions relating to plant or animal varieties or essentially biological processes for obtaining plants or animals, excluding microbiological processes or their products;
- diagnostic methods practiced on humans or animals and all these methods of treatment, including surgical methods;
- the human body at various stages of its formation and development and the discovery of any of its elements, including the sequence or partial sequence of a gene; and
- the use of human embryos for industrial or commercial purposes, including processes for:
- clone human beings;
- alter the germline or genetic identity of human beings; and
- alter the genetic identity of animals in a way likely to cause them suffering without any substantial medical benefit to humans or animals.
Section 82 of the IPL establishes that business methods or computer programs are not inventions; therefore, inventions that include only software or business methods cannot be patented, but inventions that include business methods or computer programs as well as the other patentable items can be patented.
Who owns the patent on an invention made by an employee of the company, an independent contractor, several inventors or a joint venture? How is patent ownership officially recorded and transferred?
Generally, the owner of the invention is the person who invented the invention or his successors. If the invention was created by more than one person or as part of a joint venture, the right to apply for a patent for the invention belongs jointly to all the inventors.
The inventor must be a natural person. The right to apply for a patent for an invention can be transferred to third parties.
If the invention is made by an employee of the company, it must first be determined whether it is a service invention or an independent invention. An invention is a service invention if it is created as a result of the functions performed by the employee or on the basis of the experience and work of the employee, in the enterprise or public body where the employee to his working relationship. Inventions that do not meet these criteria are considered independent inventions.
The employee must notify the employer of service inventions. The employer can claim a full or partial right to the invention. All rights arising from the invention are transferred to the employer when he notifies the inventor employee of the full claim of the invention. In this case, the employer must file a patent application and becomes the patent holder.
If the employer claims a partial right to the invention, the invention becomes an independent invention. In this case, the employer can use the invention on the basis of the partial right. The employee has the right to apply for a patent if the invention has become an independent invention.
Independent contractors are not considered employees; therefore, the right to apply for a patent for their invention belongs to the contractors, unless otherwise agreed between the parties. As mentioned, the right to apply for a patent is transferable.
Official registration of patent ownership is carried out on the basis of the information included in the application. Ownership of a patent is transferred through an assignment agreement, which must be in writing and notarized. If the document is notarized by foreign offices, it must also be legalized with an apostille.
Assignment agreements that have not been notarized will be invalid. Registration of the transfer in the register is not compulsory; however, the rights arising from assignments not recorded in the register are unenforceable against third parties acting in goodwill. It is therefore strongly recommended and good practice to record homework.
Patent office procedures
Timing and costs of patenting
How long does it usually take and how much does it usually cost to obtain a patent?
In the smooth running of the procedures, obtaining a patent takes approximately 30 to 36 months after the filing of an application.
The cost will vary between €4,000 and €6,000 (including official fees). This cost does not include writing the application.
The total costs and time – from filing the patent application to granting the patent – depend on:
- the complexity of the invention or application;
- the number of prior art documents cited; and
- the duration of the examination procedure.
Accelerated patent procedure
Are there procedures to expedite patent prosecutions?
No specific procedure is available to expedite patent prosecutions under the Intellectual Property Act; however, a Patent Prosecution Highway (PPH) system is being established at the Turkish Patent and Trademark Office. The PPH is currently being implemented between the Japanese Patent Office and the Spanish Patent and Trademark Office as pilot offices.
Content of the patent application
What must be disclosed or described about the invention in a patent application? Are there any particular guidelines to follow or pitfalls to avoid when deciding what to include in the application?
The application must disclose or describe the invention sufficiently clearly and completely for it to be applicable by a person skilled in the art.
The claims must be constructed in accordance with the description of the invention and must be clear and essential. The claims cannot extend the protection which is not covered by the description of the invention. Clear and reasonable information about the effects of features of the invention can help define inventive step.
Prior art disclosure obligations
Should an inventor disclose prior art to the patent office examiner?
According to Section 75(1)(c) of the Industrial Property Act (IPL), the description of the invention must contain information relating to the state of the art which may be known to the patentee for the purposes examination and research of the application.
Pursuit of additional claims
Can a patent applicant file one or more subsequent applications to pursue additional claims to an invention disclosed in their previously filed application? If so, what are the applicable requirements or limitations?
Section 123 of the IPL allows an applicant to assert additional claims while the main patent application is still under examination. These additional claims must perfect or improve the subject matter of the invention, and they must also comply with the subject matter of the main patent. A supplementary patent application may be filed until the publication of the certificate of grant of the main patent application.
Patent office appeals
Is it possible to appeal an unfavorable decision of the patent office in court?
It is possible to challenge a decision of the Turkish Patent and Trademark Office (TPTO) within two months from the date of notification of the challenged decision according to Article 100 of the IPL. This objection is assessed by the TPTO Review and Assessment Board.
Any final decision of the TPTO can only be challenged by an action for annulment before the Civil Intellectual Property Courts of Ankara within two months of the notification of the decision.
Oppositions or protests to patents
Does the patent office provide a mechanism to oppose the grant of a patent?
The post-grant opposition procedure is defined in the IPL. Accordingly, the opposition procedure begins as soon as the patent is granted. Third parties may file an opposition within six months from the date of publication of a granted patent. An objection may be based on the following grounds:
- the object has no patentability criteria;
- the patent does not disclose sufficient details of the invention to enable a person skilled in the art to apply it in practice; and
- the object of the patent extends the scope of the first version of the deposit.
Priority of invention
Does the patent office provide a mechanism to resolve priority conflicts between different applicants for the same invention? What factors determine who has priority?
The right to file a patent application belongs to the person who first files the application for the invention (Section 109(3) IPL). If two or more people have made the invention independently of each other, the right to apply for a patent belongs to the first to file the application, provided that the earlier application has been published. As a general rule, the first applicant is considered to have the right to apply for a patent, unless there is evidence to the contrary.
It cannot be argued before the TPTO that the applicant is not entitled to apply for a patent; however, legal action may be brought against the patent holder by the person who claims to be the real owner of the patent, before the competent intellectual property courts.
Amendment and re-examination of patents
Does the patent office provide procedures for amending, reviewing or revoking a patent? Can a court amend the patent claims during a trial?
Patent applications can be amended during the application process or upon opposition provided the scope of the application is not exceeded.
When a patent application is filed, the TPTO grants the patent if the patentability criteria are met. If the TPTO finds that the application does not meet the criteria for patentability, the applicant has two months to amend their claims or object to the TPTO report. The TPTO will consider the applicant’s objections or amendments and if the TPTO upholds its previous decision, the applicant has an additional two months to make a second set of objections or amendments. The TPTO’s next decision on the matter is final.
In addition, during the post-grant opposition procedure, the patent owner can file amendments within three months of notification of an opposition. After reviewing the opposition, the TPTO may invalidate the patent, reject the opposition or request further amendments.
The court cannot amend the claims of a patent.
Duration of the patent
How is the term of patent protection determined?
The maximum term of protection is 20 years from the filing date.
Date declared by law
Indicate the date the above information is accurate.
March 17, 2021.