How the UPC will likely affect invalidation proceedings in Turkey

The Unified Patent Court (UPC) is intended to open later this year, on 1 June 2023, and represents a monumental step towards ensuring judicial unity among EU member states. As the approval processes for 17 EU countries drew to a close a few days before the transition or sunrise period began, several issues concerning the system’s implementation became apparent. There is also some uncertainty and hesitation around how the UPC will resonate with the countries such as Turkey, which are party to the European Patent Convention (EPC) but not members of the European Union.

The UPC and the EPO

As a non-EU country that is party to the EPC, Turkey is essentially in the same position as Norway or Switzerland when it comes to the UPC. Likewise, the post-Brexit United Kingdom has joined the list of nations that are EPC members but not UPC countries. It is impossible to determine whether the UPC system will directly affect these countries. As a matter of fact, European and national patent applications can continue to be made from these countries after the UPC comes into force. Patent holders in non-EU countries will also be able to include their European patents in the UPC system for UPC countries. Or, if they wish, they can keep their patents within the classical European patent system with the opt-out procedure and will benefit from protection in their own countries. Given the EPO’s comprehensive jurisprudence database, it appears that the UPC will benefit from EPO case law until it can form its own established jurisprudence. However, European IP law circles anticipate that the opposite may also be true and UPC decisions could impact EPO case law.

Nonetheless, there is no regulation that outlines making appeal proceedings before the EPO a prejudicial matter or vice versa (ie, a patent subjected to both an EPO appeal process and a revocation action before the UPC).

Turkish invalidity proceedings

Courts in Turkey are starting to reach a consensus on deeming the opposition, and especially the appeal processes at the EPO, to be a prejudicial matter before starting the examination phase against a European patent in Turkey. In this context, courts tend to wait for the EPO’s decision so as to not occupy the judicial system unnecessarily – a possible revocation decision would directly impact the validated patent in Turkey. So, if the EPO revokes the patent after it is registered in Turkey, Turkish IP courts usually drop the case without further examination. On the other hand, if the EPO decides to maintain the European patent as granted or after amendments or limitations, the local court starts the national examination and decides on the validity of the Turkish aspect of the patent. EPO proceedings are thus crucial when it comes to European patents being validated in Turkey.

In this regard, while there is no requirement in terms of legislation, considering that UPC proceedings and EPO evaluations have a high probability of affecting each other, UPC decisions concerning a European patent’s validity that is already validated in Turkey may also affect Turkish proceedings. Thus, considering that UPC decisions are expected to be concluded faster than the EPO process, it is possible to make the following inference: decisions made by the UPC concerning the validity of a European patent included in the UPC system will set a precedent before the EPO and so will set a precedent in Turkish proceedings. This situation raises the possibility that Turkish judges may slightly change their prejudicial matter practices.

Predictions

When a national invalidation action is filed in Turkey against a patent pending before the EPO, the local court will most likely decide to wait for the EPO process to finish. If an invalidation action is also brought before the UPC at the same time, the UPC decision will probably be rendered before the EPO decision is issued. If the UPC decides to invalidate the patent, Turkish courts will likely continue waiting for the EPO decision as they will expect the EPO to also render a revocation decision. However, if the UPC decides that the patent is valid, will the Turkish court, which would expect the EPO to follow suit, go ahead and initiate national proceedings to save time? Or will it continue to wait for the EPO’s decision, despite knowing that the patent is more likely to be validated by the EPO?

The answer to this question will emerge depending on many factors, such as:

• the correlation between EPO decisions and UPC decisions over time;
• the speed at which UPC decisions are made; and
• the number of UPC decisions that Turkish courts will face.

However, if Turkish courts decide to wait for the EPO’s decision, even though a decision has already been rendered by the UPC on the same patent, it is almost inevitable that at some point one of the parties will request the withdrawal of this decision. It remains to be seen how such an eventuality will affect invalidation in Turkey.