Court takes firm stance on concretising action in invalidation claims

The Istanbul Anatolian IP Court has taken a stand against malicious tactics that aim to distract from the focus of infringement actions in a recent decision. The defendant company’s brief defence had stated that it had not infringed the disputed patent, which should be invalidated. This petition lacked any grounds or evidence, and although the defendant’s aim appeared to be to jeopardise enforcement, the court felt obliged to take the demand into consideration.

Invalidation actions in Turkey

Filing patent invalidation actions for tactical purposes (eg, jeopardising patent owners’ infringement actions or gaining time by complicating infringement proceedings) is now a common strategy for infringers and can cause patent owners to suffer due to an inability to use their patents properly during the 20-year limited protection period, even if the invalidity claims lack a solid basis and are filed on a ‘try-your-luck’ basis.

According to Turkish procedural law, parties must concretise the facts upon which they rely in a demonstrable manner. It is mandatory for the parties to clearly state this evidence, and how they are using it to prove certain facts.

However, that in many cases, IP courts continue to hear cases even when the requesting party fails to fulfil its obligations to concretise its demands. Instead, courts often appoint an expert panel, which should only be done to assist the court with the case’s technical aspects, and essentially makes the panel perform the concretisation duty that the requesting party is supposed to fulfil. Normally, assessing invalidity without concretising the case and matching the prior art documents/arguments with the alleged invalidity ground should be impossible.

Exposing the claim’s weak foundation and lack of concretisation

In this ongoing case, the patent owner had countered the defendant’s tactical move with a strategy that emphasised the procedural deficiencies in its invalidation request and, due to these procedural shortcomings, repelled the request before its substance was entered, which led to it being rejected.

The petition explained in detail that simply requesting a patent’s invalidation does not concretise the invalidation action. For this reason, to prevent the defendant's malicious efforts, the Istanbul Anatolian IP Court was requested to decide to separate the invalidation action from the main infringement case and to give the defendant a definite period for the concretisation of this separated action.

Upon detailed explanations in petitions and during the oral hearings, the court separated the invalidation action from the main infringement action and granted the defendant a specific period in which to concretise its case. After the expiry of this time period, the court evaluated the invalidation action and determined that it had not been concretised within the given term. As a result, the court decided that the invalidation action should be deemed not filed in accordance with Article 119 of the Code of Civil Procedure.

Significance of the decision

The court’s decision is a crucial stand against future malicious and tactical invalidation actions. These put the burden of concretising the case on the court, adding significantly to the workloads of the judicial authority while jeopardising patent holders’ infringement actions without any legitimate reasons.