European patent owners must publish Turkish translation of claims to claim compensation

A recent case highlights confusion around when European patent owners can claim compensation for damages in Turkey.

A European patent application that includes Turkey in its designates states is treated as a national Turkish patent application as soon as the EPO provides an application number under the Regulation Indicating the Implementation of the European Patent Convention Regarding the Grant of European Patents in Turkey. Usually, when an application is filed before the EPO, the patent owner pursues its grant before the EPO first, then continues with its validation in the designated jurisdictions. The EPO has to publish European patent applications 18 months from their filing dates, but Turkish IP law outlines no such requirement for them to be publicised by the national office while they are pending. Consequently, in most cases, patent applicants skip the publication of the application’s Turkish translation and the application first enters into the Turkish Patent Office’s records after the EPO’s grant decision.

However, the regulation states that while a European patent application that designates Turkey is deemed to be a national patent application, in order for the patent owner to enjoy the relevant protection, the Turkish translation of the claims must be published or have been given to third parties that will use the invention in Turkey.

Claiming compensation for damages

At this point, especially as the period between the application date and publication date of its Turkish translation is often prolonged for various reasons, one question arises: from what point can a patent owner claim compensation for damages?

In an example case, the European patent application was given an application date in 2020. However, the Turkish translation of the claims was first published in 2022. The third parties’ allegedly infringing acts started in 2020 in Turkey, so the patent owner questioned if it could claim for damages from 2020 or if it could only claim from 2022.    

The IP Law and the regulation clearly state that in order to benefit from protections provided for a patent application, either the claims must be published or the allegedly infringing third party must be informed of the application. Therefore, the Turkish translation of the application must be published in order to claim compensation based on a European patent right. For this reason, if the patent application is recorded – and presumably acknowledged as a right – but unpublished and therefore ineligible for protection, even if the act of infringement started earlier, compensation can only be claimed from the publication date of the claims’ Turkish translation.

It is crucial not to rely on the mere fact that Turkey is designated in a European patent application if one seeks compensation for damages suffered over a certain time period. Instead, the Turkish translation of the claims should be published as soon as possible – without waiting for the EPO to grant or reject the application – to cover all bases. Even if the translation’s publication is delayed for any reason, a written notification of the invention to third parties that are likely to infringe the patent or have already started infringement actions will allow the patent owner to claim compensation.

Statute of limitations

Another vital point to consider is the statute of limitations. Since patent infringement is a tortious act, the provisions of the Code of Obligations concerning tortious acts apply in terms of the statute of limitations. Accordingly, a compensation action should be filed within two years of the owner learning of the damage and can be applied to any case within 10 years of the infringement. Thus, there is a general statute of limitations of between two and 10 years for a compensation action for patent infringement.

A distinction must be made between the time period in which a compensation action can be filed and that during which damages can be demanded. According to case law, for cases of determination, suspension and prevention of patent infringement, the statute of limitations will not run as long as the infringing acts continue. However, a compensation action can only be filed within the general statute of limitations. After the aforementioned conditions that initiate the statute of limitations are fulfilled, it begins to run regardless of whether the patent infringement continues. In this case, in order to be able to claim compensation for damages arising from patent infringement, it is crucial to accurately determine the moment that the statute of limitations became effective – the date that the damage was revealed. It is accepted that in order for the damage to be acknowledged as learned, the information that would determine its existence, quality and basic elements must have been learned to the extent that it can be sued. Based on case law – although there is no stable Supreme Court practice – the date that the infringement stops is considered to be the learning date for claiming compensation. In our opinion, this is an appropriate approach. However, since the Supreme Court may adopt a narrower interpretation in some decisions, (ie, if it detects that the statute of limitations started earlier than the conclusion of the infringement action), it is crucial to carefully evaluate each case so as to not put the right to claim compensation at risk of the statute of limitations.

Consequently, when it comes to patent infringement compensation claims, a serious loss of rights is possible from legislation and high courts’ interpretations of it. In this respect, a comprehensive legal assessment is critical to avoid such a loss, especially for damages claims based on European patents. Applicants should have the Turkish translation of the claims published in Turkey to be on the safe side.