Selin OZBEK CITTONE
Attorney at Law / Managing Partner, Dual qualified lawyer (Turkey and England & Wales)
18 January 2017
The list of non-patentable subject matters is expanded
According to Article 82, inventions in all aspects of technology which are novel, contains an inventive step and are industrially applicable may be patented. In consideration of state of the art, it is deemed that an invention, which is not self-evident to an expert in the relevant technical area, contains an inventive step. An invention shall be regarded as being industrially applicable where it is susceptible to be produced or used in any given field of industry. In addition to non-patentable subject matters regulated in Decree Law No. 551 on the Protection of Patent Rights, computer programs are explicitly excluded from patent protection with Article 82. Further, the below listed items do not qualify as inventions:
It is stated in the preamble of the Law that computer programs, regarding which there is a debate over whether they can be subject to patents, may enjoy protection under the Law of Intellectual Property Rights. For an invention to qualify for a patent, it should solve a technical problem while on the other than, when computer programs are installed into a computer, they cause physical changes in the memory and the processor. Although these physical changes are deemed as ordinary technical effects, they are not sufficient for computer programs to qualify for patents. To grant patent protection for computer programs, there must be further technical effects beyond these ordinary technical effects and computer programs may be patented along with a technical device/hardware on which further technical effects occurs. For instance, a computer program connected with the operation of a device may be granted with a patent together with such technical device.
Patent application period is shortened
In order to simplify and shorten patent procedures, patent registration term has been decreased to a term between 7 to 27 months, which was previously a term between 17 to 42 months.
System for granting patents without examination is annulled
The system for granting patent without (substantive) examination in the previous regulation was inadequate in providing effective protection to rightsholders and led to disputes between the parties. Following its annulment with the Law, all patent applications are subject to an examination period.
An objection can be made after the registration
According to Article 99, third parties may object to the decision regarding the grant of a patent within 6 months as of the publication date of the decision in the TP patent bulletin. This provision aims to reduce the number of cases regarding patent invalidation claims filed before the courts.
Protection terms remain the same
In parallel with previous regulations, it is not possible to extend the protection terms, which are determined as 20 years for patents and 10 years for utility models as per Aarticle 101.
Service inventions/free inventions for state institutions and organizations are extensively regulated.
The distinction in the previous regulation between service invention and free invention is preserved under the Law. However, the scope is extended in relation with public institutions and higher education institutions. Article 113 of the Law regulates that amounts to be paid to employees of the said institutions cannot be less than one third of the income gained from the relevant invention. In case of the use of the invention by the institution itself, the amount to be paid cannot be higher than ten times of the net salary paid to the employee in the month of such payment. Any disputes arising out of the determination of the amount of said payment shall be resolved by arbitration and the applicable arbitration process will be regulated by a secondary regulation to be enacted.
Employee inventions are also regulated more broadly in the Law. Any inventions made by an employee during the course of employment as a result of the activities which the employee has undertaken within the structure of a business or public administration or majorly based on the experiences and work of the business or public administration are defined as employee inventions and any inventions outside of the above scope are deemed to be free inventions. The cases where an employee invention transforms into a free invention and the legal relationship between the employer and the employee are regulated in detail.
Agreements concluded between an employee and employer regarding service inventions and free inventions are regarded as invalid if they significantly inequitable, even if such agreement is in compliance with mandatory rules regarding employee inventions. The same rule applies for determination of the price. Objections regarding the inequitableness of the agreement and price may be made at the latest within 6 months as of the termination date of an employment agreement.
Inventions at higher education institutions
Reserving provisions of the specific laws and the regulations under this article, provisions regarding inventions of employees shall be applied also for the inventions achieved as a result of scientific studies and researches conducted in higher education institutions defined in clause (c) of the first paragraph of Article 3 of Law No. 2547 and higher education institutions affiliated to the Ministry of National Defence and the Ministry of Internal Affairs.
Inventions in publicly supported projects
According to Article 122, it is mandatory to report inventions which are made within the projects funded by state institutions and organizations, to the funding public institute.
The beneficiary of the project fund is prohibited from making any disclosures that may affect the grant of the patent or utility model, until the procedure is completed. In case the beneficiary of the project fund claims the ownership of the invention, he/she is obliged to make a patent application for the invention and refer to the funding state institutions and organizations in the application. In the event that the beneficiary of the project fund claims the ownership of the invention, the funding state institution or organization has a free of charge license to use of invention for its own needs. This right may be waived in the funding agreement. The state institution and organization also has the right to use the invention subject to the patent and to request the grant of a license to third parties on reasonable conditions.
Research report for utility model applications becomes compulsory
As per Article 142, inventions except for those relating to chemicals and biological substances, pharmaceuticals and biotechnological substances which are applicable in industry may be the subject to utility models. According to the previous regulation, a research report was prepared only upon the request of the applicant. As a result of the amendment of the Law and research report is now a requirement for all utility model applications.