Sponsored briefing: Recent patent highlights in Turkey

Geographically positioned between Europe and Asia, Turkey is a strategically placed country, with a population of 82 million and a larger youth population than any EU member state. Taking its place on the list of G20 countries, Turkey aims to position itself in the global value chain and strengthen its export platform by focusing on high-tech patents, including electronic machinery and equipment, automotive spare parts, railway and maritime transport, energy generation and efficiency projects. In addition, as a natural transport hub, Turkey is a transitional trade platform between Europe and Asia, which significantly increases the relevance of appropriate IP rights protection.

Turkey has substantially harmonised its intellectual property laws with the EU legislation and the international agreements such as the Paris Convention and TRIPs, to provide effective legal means for enhanced patent enforcement capabilities.

A major development regarding the patent legislation and litigation landscape was the entry into force of the Industrial Property Code 6769 (IP Code) in 2017, which has profoundly changed the IP landscape in Turkey as it affects the legislative, administrative and professional elements thereof.

Turkey has specialised Courts of Intellectual and Industrial Rights (IP Courts) established in Istanbul, Ankara and Izmir, which have jurisdiction in all IP matters, including patent disputes.

In practice, Istanbul is the city in which the highest number of patent litigation matters are filed as Turkey is becoming a host country for multi-jurisdictional and complex high-profile patent disputes.

Standard Essential Patent (SEPs) Disputes

Turkey has started discussing the licensing of SEPs following a decision by the Turkish Competition Authority at the end of 2019, in which the authority referred for the first time to FRAND terms regarding a patented technology. The Competition Board decided on the SEP at the end of 2019 and issued the motivated decision at the beginning of 2020. The board in its decision complies with EU legislation and is likely to choose one of the approaches employed in EU jurisprudence for its analysis.

In the current Competition Board decision – for which the motivated decision was issued in 2020 – the board decided that there had been a breach of competition by the SEP owner on grounds of abuse of dominant position in the relevant market – including:

• the non-challenge clause for not contesting the validity of the patent in the licensing agreement;
• the fact that the SEP owner initiated court proceedings without any willingness to negotiate; and
• the SEP owner acted without transparency in assessing the royalty as anti-competitive conduct.

The current decision is important in constituting a landmark decision concerning SEP licensing by the board and is likely to be considered as a reference in upcoming SEP disputes.

Enforcement of Patents at Turkish Borders

In comparison with brand enforcement, Customs has limited ability in patent enforcement; however, the number of patent registrations at the Customs, is increasing.

One of the best practices in this regard has been a patent enforcement project (managed by the authors) at Customs which has run as a part of the worldwide patent protection programme since 2013 in respect of patented textile dye molecules.

The patent holder has secured the seizure of more than 100 tons of infringing products in Turkey as per the program. Again, based on this programme, 50 customs suspension notifications have been notified from four customs administrations. The firm has filed 14 court actions for the infringement of its patents and a total of seven nullity actions against its asserted patents have been received as counter-attacks, with five of these cases having already been finalised (all in favour of the patentee). The results not only indicate the strength of the firm’s patents, but also the capability of Customs in patent enforcement at the borders.

Mediation as an ADR mechanism for patent disputes

Upon Turkey’s ratification of the United Nations Convention on International Settlement Agreements Resulting from Mediation (The Singapore Convention) on 25 February 2021 the Singapore Convention is expected to be in force by 22 October 2021 in Turkey.

With the Singapore Convention, the settlement agreements, which have been mediated by the conflicting parties and resolved commercial disputes of an international nature, will be enforceable in Turkey. The Singapore Convention enables the enforceability of the foreign commercial settlement agreements including the patent disputes in Turkey.

It is also important to note that by 1 January 2019 The Code of Commerce was amended by which the implementation of the mediation procedure before instituting a court action became mandatory. The amendment became mandatory for all types of commercial disputes involving the collection of receivables or compensation claims. Therefore, the patents infringement actions involving compensation claims, disputes with regard to the payment or calculation of remuneration of employee inventions and employee designs, disputes with regard to licence agreements are effected by this change.

According to the Law on Mediation in Civil Disputes, the settlement agreements which are mediated and signed jointly by the parties are deemed as a document in nature of a verdict in Turkey.

Life Sciences Patent Disputes

Life sciences patent disputes continue to constitute the largest portion of the patent disputes in Turkey. According to a survey, 46% of the patent actions filed before the Istanbul Courts in 2018 and 2019 relate to the life sciences sector. Most of the pharma litigation is between the originator and the generic firms. The scope of Bolar exemption, data exclusivity, stockpiling and use for exportation purposes, second medical use and the scope of biotech inventions are the debate topics in the area.