“Innovations play a major role in the development of the economy and the increase in productivity. As stated in the preamble to the Industrial Property Law, an effective patent system encourages creative talents to make inventions and to capitalize on those inventions by applying them to industry. Furthermore, the protection of patent rights fosters economic growth within the country and creates a suitable environment for the production and transfer of technology. Many initiatives are often underpinned by a patent or utility model. However, not every innovation is recognized as an invention, and not every invention qualifies for patent or utility model protection. We spoke with Attorney İrem Toprakkaya Babalık about the patentability criteria for inventions and the legal rights of patent and utility model holders."
What are inventions, patents, and utility models? Could you briefly explain the differences between them?
An invention can be defined as a new, reproducible idea aimed at solving a technical problem. A patent or utility model, on the other hand, refers to exclusive rights granted to the rights holder to prevent third parties from manufacturing, selling, using, or importing the invention without permission. While a patent is a type of protection that must also meet the criteria of an invention, a utility model involves simpler innovations that do not meet the criteria of an invention. For this reason, utility models are more commonly preferred in our country. The key difference between a patent and a utility model is that while a patent requires the invention to overcome the state of the art, no such condition is required for a utility model. Therefore, inventions that are new and industrially applicable can be protected as utility models, whereas inventions that are new, industrially applicable, and overcome the state of the art will be eligible for patent protection. Protection periods begin on the filing date and last for 7 years for unexamined patents, 20 years for examined patents, and 10 years for utility models. Unexamined patents can be converted into examined patents by filing a request for examination before the 7-year protection period expires.
What conditions must an invention meet in order to be patented?
In order for an invention to be granted a patent, certain conditions are stipulated in the Industrial Property Law. These conditions are set out in Article 82 of the law as novelty, inventive step, and industrial applicability.According to Article 83 of the same law, an invention is considered new if it is not included in the state of the art. Everything that has been disclosed to the public and made accessible before the filing date of a patent and/or utility model application—anywhere in the world—through oral disclosure, written disclosure, use, or other means is considered part of the state of the art.“Oral disclosure” refers to presentations such as conferences, radio, and television programs. “Written disclosure” includes documents, statements published on websites, photographs, drawings, etc. “Use” refers to the use of the invention by the inventor or by any person not bound by a confidentiality obligation. “Other means” include making the invention accessible to the public through platforms such as museums, fairs, and exhibitions.Therefore, before filing a patent or utility model application, a careful investigation must be conducted regarding novelty, and it must be determined whether the invention is indeed new. The requirement of an inventive step (i.e., surpassing the state of the art) means that the invention must represent an objective advancement compared to the current state of technology. A patent is not granted for every new or different invention, but only for those that can be considered significant and non-obvious developments that experts in the field could not have easily conceived.Industrial applicability means that the invention can be produced, applied, or used in any branch of industry, including agriculture.
What are the elements that are not considered inventive?
The exceptions to patentability are listed in Article 82 of the Turkish Industrial Property Code. The exceptions are explained with examples in the Patent/Utility Model Application Guide published by the Turkish Patent and Trademark Office. Accordingly, discoveries, scientific theories, and mathematical methods are not inventions. For example, developing a shortcut for a mathematical operation is not an invention. However, a machine that operates using this shortcut may constitute an invention. Plans, rules, and methods related to mental activities, business activities, or games are not inventions. A language learning method, a puzzle-solving method, or plans for organizing a game or a commercial enterprise are not inventions. However, a new device for teaching a language, solving a puzzle, implementing a plan, or playing a game may constitute an invention. Computer programs are not inventions. However, a computer program that implements a method for solving a technical problem, or a device containing such a computer program, may be protected by a patent. Products with aesthetic qualities, literary and artistic works, and scientific works are not inventions. If they qualify as works, they are protected under the Law on Intellectual and Artistic Works, or under unfair competition provisions if the conditions are met. Similarly, the presentation of information is not an invention.
What should be considered when filing a patent application?
A thorough search must be conducted regarding the element of novelty. For this purpose, research can be carried out through various patent databases, including the Turkish Patent and Trademark Office portal (https://portal.turkpatent.gov.tr ), the database of the European Patent Office such as Espacenet (www.worldwide.espacenet.com ), the database of the United States Patent and Trademark Office (https://www.uspto.gov/patent ), the online patent search database of the World Intellectual Property Organization (http://www.wipo.int/patentscope/search/en/search.jsf ), the Japan Patent Office database (https://www.jpo.go.jp/ ), independent databases such as http://www.freepatentsonline.com , and Google’s online patent search platform (http://www.google.com/patents ).Additionally, information about the websites of national and regional patent offices can be obtained from https://www.wipo.int/directory/en/urls.jsp . Prior to applying to the Turkish Patent and Trademark Office, it is also possible to conduct a preliminary search through the EPOQUE database (which includes patents from various countries and patent systems). This search is subject to a fee.During the application process, it is essential that the specification and claims be carefully drafted by a subject-matter expert. The specification is the section where the invention is described in full detail. It must be clear, complete, and sufficiently detailed so that a person skilled in the relevant technical field can implement the invention without any hidden information.The claims, on the other hand, define the technical features of the invention for which protection is sought and which are asserted to be novel. In other words, the scope of protection is determined by the claims. The technical features intended to be protected must be explicitly stated in the claims. Any features not included in the claims cannot be protected.
How is the scope of coverage determined?
The scope of protection provided by a patent application or a patent is defined by the claims. However, the specification and drawings are used in interpreting the claims. Claims cannot be interpreted as limited solely by the literal meaning of the words used. However, claims cannot be broadened to include features that were conceived by the inventor but not claimed in the claims, even if such features would be apparent to a person skilled in the relevant technical field through the interpretation of the specification and drawings. Claims are interpreted in a manner that provides the applicant or patent owner with the protection to which they are entitled and conveys a reasonable degree of certainty regarding the scope of protection to third parties.
Who is the patent holder?
The inventor is always a natural person. The patent right belongs to the inventor or their successors. This right may be transferred. If an invention is made jointly by multiple persons, the right to apply for a patent belongs to all of them. If the same invention is made by multiple persons independently and without knowledge of one another, the right to apply for a patent belongs to the person who filed the application first, provided that the earlier application has been published. In such cases, the subsequent person’s right of prior use is reserved. The first applicant is presumed to be the owner of the right to apply for a patent until proven otherwise. If a patent application or patent belongs to multiple persons, the partnership regarding the right is determined according to an agreement between the parties; if no such agreement exists, it is determined in accordance with the provisions on joint ownership in the Turkish Civil Code. The unanimous consent of the rights holders is required for the granting of a license.
Who holds the rights to inventions created by employees?
An invention made by an employee in the course of their duties, or largely based on the employer’s experience and work during the employment relationship, is considered a service invention. Inventions that are not related to the employee’s job are considered free inventions.For inventions developed as part of the employee’s duties or largely based on the employer’s experience and work, the rights belong to the employer. In the case of free inventions, the rights belong to the employee. In distinguishing between a service invention and a free invention, it is irrelevant whether the invention was developed during working hours or within the workplace. What matters is the nature of the invention and whether it is related to the job.When an employee makes a service invention, they are obliged to notify the employer in writing and without delay. If the invention is made by more than one employee, the notification may be submitted jointly. The employer must promptly and in writing inform the notifying employee(s) of the date the notification was received.The employee is required to keep the service invention confidential unless and until it qualifies as a free invention. The employer may claim full or partial rights over the service invention. The employer must notify the employee in writing of such a claim within four months from the date the notification is received. If the employer fails to notify within this period or declares that no rights are claimed, the service invention becomes a free invention.If the employer claims full rights over the service invention, the employee may request reasonable compensation. If the employer claims partial rights, and uses the invention, the employee also has the right to request reasonable compensation.If the employer claims full rights over a service invention, they are obliged to file the initial patent application with the relevant authority. However, the employer may refrain from filing a patent application if required by business interests. When the employer claims full rights, all rights to the invention transfer to the employer upon the employee receiving the notification.If the employer claims partial rights, the service invention becomes a free invention. However, in this case, the employer retains the right to use the invention based on the partial rights claimed.
What rights are granted to the patent holder?
Pursuant to Article 85 of the Industrial Property Law, the patent owner enjoys patent rights without any distinction as to the place of the invention, the field of technology, or whether the products are imported or domestically produced. The patent owner has the right to request the prevention of the following acts if performed without authorization: a) The manufacture, sale, use, or import of the patented product, or the possession of such a product for any purpose other than personal use. b) The use of the patented process. c) The offer to others to use a process patent known or reasonably expected to be known to be prohibited. d) The sale, use, importation, or possession for any purpose other than personal use of products directly obtained by the patented process. However, acts that do not serve an industrial or commercial purpose and are limited to private use, as well as experimental acts involving the patented invention, are excluded from the scope of patent rights. The subject matter of the patent may not be used in a manner that would harm the law, public morality, public order, or public health. The law also provides for other exceptions in specific areas such as drug trials and the preparation of prescriptions (See SMK Art. 85(3)).
What acts constitute infringement of a patent or utility model right?
To imitate the product covered by the invention, either in whole or in part, by manufacturing it without the permission of the patent or utility model owner, selling, distributing, or otherwise introducing into commerce products that are the subject of the invention and produced by infringement, knowing or having reason to know that they were produced by such infringement, or importing them for such purposes, holding them for commercial purposes, using them by putting them into practice, or making an offer to enter into a contract regarding such products, Using the patented process without the patent owner’s consent, or selling, distributing, or otherwise introducing into commerce products directly obtained through the patented process—or importing such products for these purposes—while knowing or having reason to know that the process is being used without authorization, or holding such products for commercial purposes, using them by putting them into practice, or making an offer to enter into a contract regarding such products, Infringement of a patent or utility model includes the acts of infringing the patent or utility model right, or unauthorizedly expanding the rights granted by the patent or utility model owner through a contractual license or compulsory license, or transferring such rights to third parties.
In the event of an infringement of a patent or utility model right, what legal remedies are available to the patent holder?
A patent holder whose rights have been infringed may request the court to determine whether the act constitutes infringement, preventing potential infringement, ceasing the infringing acts, removing the infringement, and compensating for material and moral damages; seizing the products constituting the infringement or those subject to penalties, as well as the devices, machines, and other tools exclusively used in their production—in a manner that does not hinder the production of other products not subject to infringement— recognition of ownership rights over the seized products, devices, and machinery; taking measures to prevent the continuation of the infringement; specifically, altering the forms of the seized products, devices, and machinery, removing the trademarks thereon, or destroying them if such destruction is unavoidable to prevent infringement of industrial property rights, and, if there is a valid reason or interest, may request that the final decision be published in full or in summary form in a daily newspaper or similar medium, or served upon the parties, with the costs to be borne by the opposing party.
İrem TOPRAKKAYA BABALIK, LL.M., Attorney & Trademark Agent