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Patents

Patents

To understand the technologies involved is the primary importance for an effective prosecution. We are offering a wide range of patent services in various technical fields such as mechanics, electronics, electric, chemistry, biochemistry, pharmaceutical, software, medical technology in order to protect and enforce patent. Inventions which are novel, which surpass the State-of-the-Art and which are applicable in industry shall be protected as a patent. Priority according to Paris Convention can be claimed within 12 months from the first filing date. Period of protection of a patent is 20 years and 10 years for utility models.

Orbis Vista, represents its clients before national authorities in all procedural and legal steps concerning Turkish patent and utility model applications together with European Patent validations and PCT national phase entries in various fields of technical and scientific areas. High skilled, specialized experts and patent attorneys that have strong technical background and expertise are providing qualitative services by maintaining the same for each time, each client and each case.

The firm also provides prior art search, freedom to operate analyses, clearance, invalidity searches, drafting and prosecution services combined with granting systems for claimed inventions which are to be treated locally in an acceptable manner, litigations, IP investigations, invalidation and cancellation proceedings before IP courts, due diligence, anti-counterfeit projects, annuities, licensing. Everything is under the same roof handled by experienced and specialized attorneys.

Besides prosecution, litigation and post grant services, it’s one of our main goals to feed the client with development in determined activity fields for technology review and monitoring, further to strategy advisory for best protection, best results and best enforcement. We review, clients existing patent and utility model portfolio and offer advice on its strengths and weaknesses from the point of view of the National Patent Law, moreover we review worldwide competitor and sector activities to help framing a strategy for protecting and enforcing the owned patent rights.

Following services are offered in patent & utility model division;

Prior Art Searches

Clearance

Freedom to Operate Analyses

Invalidity Searches

National and International Patent Filings

Drafting

Technical Translation

EP Validations

PCT National Entries

Oppositions

Litigations

Due Diligence

IP Investigations

Anti-Counterfeit Projects

Invalidation & Cancellation Proceedings

Monitoring Technical Development in Specific Field

Licensing

Annuities

 

In Turkey, recently, the new Turkish IP Law No. 6769 pertaining to the protection of patents has entered into force on 10th January 2017 after the previous Decree Law No. 551 entered into force on 27th June 1995. Turkey is also a party to the Patent Cooperation Treaty (PCT) as of January 1996 and The European Patent Convention (EPC) as of November 1, 2000.

What Introduces the New Turkish IP Law for Patents & Utility Models?

As of January 10, 2017 with the enactment of the new Turkish IP Law No. 6769, important changes have been made and attention is needed. Some of those changes are quite useful and expected for a long time and a few changes will directly influence international clients and the whole monitoring system for patents. Recent changes can be summarized as follows;

A Totally New Stage is Introduced: Post-Grant Opposition

Upon publication of a grant decision, a third party may file an opposition against a granted

patent within six months of its publication. Once the opposition is filed, the Turkish Patent

Institute notifies and invites the patentee to submit its opinion or to amend its patent

application. Both the opposition and the patentee’s opinion and amendment are examined by the Board to be established at the Turkish Patent Institute. The composition of the Board and other procedures will be clarified with the implementing regulations.

Abolition of the Seven-Year Patent System

The Law abolishes the short term patent of seven years which could be obtained without substantive examination. The new law brings the request for a substantive examination mandatory. Otherwise the patent will be deemed as withdrawn. But the patents previously filed before January 10, 2017 will be considered in the under the previous regulation which means seven-year patent protection without substantive examination is still available just for these applications. With the enactment of the Law, any invention may only be registered as a patent if it is new, has an inventive step, and has an industrial application.

Utility Model System Re-Adopted

The Law introduces a compulsory novelty search for utility model applications also and applicants may file amendments during the registration proceedings. Post grant opposition will not be available for utility models.

Search Request is Available at Same Time of Filing

The applicant may request search report at the same time of filing but it’s optional. If the search report is not requested with filing the applicant has 12 months-time for the same.

Abolition of 2nd and 3rd Examinations

Just one examination may be requested by the applicant due to 2nd and 3rd examinations are not available any more. Instead of 2nd and 3rd examinations, TPO gives an amendment right to the applicants to correct/re-arrange the patent in necessary way and every applicant will enjoy tree times amendment right until have the patent granted.

Divisional Application Request is Available at Any Stage

The applicants may file a divisional application any time before grant without prerequisite to have a unity of invention objection during examination.

Re-Institution of Lost Rights

Re-institution of lost rights because of missing due dates including annuity payments being partly facilitated in exceptional cases. The holder can request re-institution of lost rights by paying the official recovery fee and keep the patent alive within two months from the notification date of invalidation decision.

Turkish Patent Office Recently Approved as an International Search/Examination Authority

The Turkish Patent Office recently approved as an international International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) by WIPO together with 19 national offices. Since March 8, 2017 it’s officially available to choose TPO as ISA in the international PCT patent applications.

Address, Legal Entity And Company Name Changes Will Influence Entire IP Portfolio

Pursuant to the new IP Law a change of address, legal entity and company name will be reflected in the entire IP portfolio of an applicant, which comprises trademarks, industrial designs, patents and utility models registered or pending in the name of the same owner.

Comparsion In Detail

Previous Regulation New IP Law
Any formal deficiency should be completed within 3 months. Any formal deficiency should be completed within 2 months instead of 3 months.
Search request should be filed after the completion of formal examination and within 15 months from the filing date. Search request may be filed at the same time of the application and within 12 months from the filing date without any official notification. For utility models, search request should be filed within 2 months after receiving official notification showing the completion of formal examination.
After the completed search report an applicant should make a system choice within 3 months. After the completed search report an applicant should request the examination within 3 months.
In case the examination report is negative, the applicant should submit the opinions/amendments within 6 months and request the 2nd examination. In case the examination report is negative, the applicant should submit the opinions/amendments within 3 months. In case, TPO requests some amendments before the grant decision of the patent, the applicant should completed the amendments within 2 months.
The applicant has a right to oppose against any decision of TPO apart from the grant decision within 2 months of the received notification.
Annuity payments start at the beginning of 2nd prospective year of any patent. Annuity payments start at the end of 2nd prospective year of any patent. (Md. 101)
It’s necessary to submit use evidences within 3 years from the publication date of grant to prevent any possible compulsory license requests of third parties. It’s still necessary to submit use evidences within 3 years from the publication of grant but in case the applicant stops using the patent during more than 3 years, the compulsory license will be again in force.
Patents and utility models were subject to be opposed by third parties but TPO wasn’t considering the oppositions in approving the patent to grant. TPO just was collecting the received arguments to be declared I case of any lawsuit before the court, where is necessary, and where is requested by the complainant. Patents are subject to an opposition within six months from its grant publication. Utility models are subject to an opposition within 3 months from the publication of search report. TPO will consider the received oppositions to decide whether to reject or not the opposed patents.

Important Remarks

  • Any applications filed before the publication of the new law will enjoy the earlier regulations in force.
  • Trademark litigation allows for civil and/or criminal proceedings whereas civil proceedings are available for patent and design litigations.
  • Registered IP rights will not constitute a legitimate defense against any infringement claim brought by the owner of the earlier IP right.
  • The new intellectual property law introduces the “international exhaustion of rights principle”, thereby replacing the earlier “national exhaustion principle”.

 

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