Türkiye: How to navigate the patent litigation landscape

In summary

This article explores IP litigation in Turkey and answers some key questions for the jurisdiction.

Discussion points

• Emerging trends and significant policy updates in recent years
• Any new industry-based or company trends starting to emerge?
• What is the latest movement in damages awards and how damages are calculated?
• How to make best use of forum shopping
• What are the five key ‘need to knows’ for the jurisdiction?
• Injunctions at a glance

Referenced in this article

• European Patent Convention
• Industrial Property Law
• Amendment of the Civil Litigation Law
• IP Law No. 6769

In a landmark decision on 21 October 2021, the General Assembly of the Court of Cassation conducted a comprehensive evaluation of the issue of second medical use patents granted by the European Patent Office (EPO) being challenged frequently by generic drug manufacturers.

Prior to the introduction of article 54(5) in the European Patent Convention (EPC) 2000, which permitted purpose-limited product claims to encompass a known product used for a novel and inventive therapeutic purpose, patent safeguarding for an established drug employed in a novel and inventive therapeutic application was achievable solely through purpose-limited process claims in the Swiss-type format.

Türkiye became a member of the EPC in 2000, and its national patent law largely aligns with EPC provisions. Nevertheless, the national law does not explicitly address the patentability of second or subsequent medical use claims.

In the subject case, the first instance IP court acknowledged Türkiye’s EPC membership but did not consider the EPO’s Enlarged Board of Appeal’s G5/83 case law as binding for Türkiye. Therefore, the first instance IP Court ruled that a patent revealing the second medical use of a known substance should be revoked. The court argued that this patent was granted before the EPC explicitly addressed the patentability of second/subsequent medical use claims.

As a result of an appeal, the Court of Cassation reversed the decision of the first instance court, in favour of the patent holder. As the first instance court resisted this decision, the case was referred to the General Assembly of the Court of Cassation.

The General Assembly rejected the lower court’s claim that EPO case law was not binding for them. It was stressed that, as Türkiye had accepted both the EPC 1973 and EPC 2000 provisions, evaluating the validity of European Patents regarding first and second medical uses should consider EPC provisions and case law. The General Assembly concluded that a patent cannot be invalidated solely based on it being a second medical use patent granted during the EPC 1973 period.

A decision concerning mandatory arbitration for employee inventions for the determination of a reasonable fee was issued by the Council of State on 26 November 2020. The request for annulment and suspension of the execution of the related provisions was also discussed.

A lawsuit was filed before the IP Courts, aiming to determine the amount of compensation for an invention made by the employee, as the company had filed a patent application for the invention but did not remunerate the employee. The local court dismissed the case, citing that regulations prescribed arbitration for the determination of compensation.

The employee contested this decision on the basis that the mandatory arbitration provisions were unconstitutional, arguing that these provisions, which lacked a legal basis in the Industrial Property Law, deprived the courts of their jurisdiction, and that the matter should be resolved through judicial proceedings. Subsequently, the employee initiated an annulment lawsuit before the Council of State to challenge the mandatory arbitration provisions and request the suspension of their execution.

The Council of State found that the Regulation On Employee Inventions, Inventions Realised in Higher Education Institutions and Inventions Arising From Publicly Supported Projects, with the second sentence of article 11/2, the phrase ‘through arbitration’ in article 24/1 and article 24/4, went beyond what is allowed by the law. The Council of State emphasised that the general jurisdiction of the courts can only be abolished by law, and that any other means such as regulations by administrative bodies are not acceptable according to articles 9, 36 and 141 of the Constitution.

Emerging trends

The major IP law in Türkiye is Intellectual Property Law No. 6769, which regulates the IP system including patents. As a result of reflection of the Bolar exemption in the Law No. 6769, a significant number of court filings in Türkiye consist of lawsuits seeking determination of non-infringement of pharmaceutical patents by licence applications for generic products. Generic pharmaceutical companies aim to be able to launch their generic products as soon as the patent expires, by obtaining a non-infringement declaration during the licensing period before the Ministry of Health.

Significant policy updates in past years

Law No. 7251 dated 28 July 2020 on the Amendment of the Civil Litigation Law, implemented a clause that permits an extension in the deadline to contest an expert’s findings. This addition is a direct response to the practical difficulties previously experienced owing to the constrained two-week window originally allotted. The revision in the law now provides a potential doubling of this period, thereby enabling a month-long duration for parties to draft and submit their detailed assessments or objections.

This legislative refinement was motivated by the recognition that the complexities involved in dissecting and challenging expert evaluations often require more than the initial two-week period, especially when delving into specialised or highly technical content. The law now explicitly states that parties can petition for more time if the complexity of the material makes timely response impractical or impossible.

The modification in the law is especially pertinent to patent disputes, which, by their nature, demand technical scrutiny and can benefit from the additional time for a thorough response to expert findings. The expectation of the practitioners is that similar amendments are made for other procedural steps in patent cases that require complex technical examinations at every level.

Any new industry-based or company trends starting to emerge?

As mentioned above, owing to the incorporation of the Bolar exemption into Law No. 6769, a considerable portion of legal cases in Türkiye revolves around lawsuits that seek to establish the absence of patent infringement in generic pharmaceutical products through licensing applications. Generic pharmaceutical companies pursue the goal of being able to introduce their generic products immediately upon the expiration of the patent by securing a declaration of non-infringement during the licensing phase with the Ministry of Health.

What is the latest movement in damages awards and how damages are calculated?

Moral, material and reputational damages are available to a successful plaintiff. Moral damages are claimed as a set amount by the plaintiff initially in civil proceedings. On the condition that the amount initially claimed by the plaintiff is not exceeded, the judge determines the amount of moral damages by discretion.

Material damages are calculated by court-appointed experts in practice. Material damages, actual damages and profit loss can be claimed. As per the IP Law No. 6769, material damages can be calculated based on the following methods that the plaintiff is free to choose from:

• the reasonable licence fee that the infringing party would have paid if had the right been used lawfully through a licence agreement;
• the possible income of the patent owner without competition of the infringer; and
• net income made by the patent infringer.

As calculation of damages by court experts prolong court proceedings significantly, there is an trend that patent owners choose to claim moral damages only, which does not require expert examination.

How to make best use of forum shopping

In Türkiye, specialised IP courts exist in four major cities, including Istanbul, Ankara, Izmir and Antalya. In jurisdictions where no specialised IP courts exist, general courts of first instance handle IP disputes.

As per the IP Law No. 6769, IP courts in Ankara have the sole jurisdiction over lawsuits against the decisions of the Turkish Patent and Trademark Office. No forum shopping is available in that respect.

For civil lawsuits to be filed by the IP right holder against third parties, that would include infringement actions, courts of the plaintiff’s residence, courts of the location that the illegal act took place and the courts of the location that the effects of the illegal act can be seen have jurisdiction. From those three forums, if available, it would be appropriate to choose the forum where a specialised IP court exists.

For civil lawsuits to be filed by third parties against the IP right holder, which includes invalidation actions, courts of the defendant’s residence have sole jurisdiction. No forum shopping is available in that respect.

What are the five key ‘need to knows’ for the jurisdiction?

Türkiye is a party to the Patent Cooperation Treaty agreement. Türkiye is also a party to the EPC Agreement but not a member of the European Union. Therefore, Türkiye is not part of the Unified Patent Court (UPC) and unified patent (UP) system. The UPC/UP system is expected to have only indirect effects in Turkish patent practice.

There are specialised IP courts in Türkiye handling IP disputes. However, there are no courts dedicated to patent cases. Judges and other judicial staff of the IP courts are not required to have any technical background, and in practice none of the judges have such specification. For technical aspects in all patent cases, the system relies on expert examination handled by court-appointed neutral experts.

Patent infringement is not a criminal offence under Turkish law. Civil proceedings are available for patent infringement cases and main actions take around four to five years to finalise. Therefore, preliminary injunctions play a key role in patent infringement cases.

As a practical precondition for preliminary injunctions and as an important tool for documentation of the existing status of evidence, evidence-securing proceedings are largely used in Turkish patent practice. Evidence-securing proceedings are ex parte court actions at the end of which, an expert report is issued documenting the status of evidence through an expert examination either on site, online or on paper within a court file.

Under the Regulation on Implementation of the European Patent Convention Concerning Grant of European Patents in Türkiye, a European patent application designating Türkiye shall enjoy protection and shall be enforceable in Türkiye, starting from filing of translation of the claims with the Turkish Patent Office or from the date the other party is made aware of the invention. This is an important good to know for European patent applicants who would like to enforce their applications in Türkiye and possibly to claim damages.

Injunctions at a glance