INVALIDITY OF THE PATENT VE UTILITY MODEL CERTIFICATES AND CIRCUMSTANCES OF INFRINGEMENT

1- INTRODUCTION

“Decree-Law No.551 Pertaining To The Protection Of Patent Rights ” concerning to the protection of inventions in our country, has come into force on June 27,1995. By means of the said Decree Law, the inventions are protected by the certificates of patent and utility model. Together both of the two protection forms are related to the protection of inventions; they show diffrences for the purposes of especially the criteria of giving the certificate; the proceedings in the period after the application until the certificate is given and the periods of protection. In this notification, the implementations concerning the rights of patent and utility model

The criterias of giving the certificates of Patent and Utility Model and proceedings after the application;
-The comparative evaluation of protecting the inventions with Patent And Utility Model Certificates,
-The protection scope of the invention protected by Patent or Utility Model Certificate,
The invalidation circumstances of Patent or Utility Model Certificates,
-Circumstances of infringement
-Tecavüz halleri
are evaluated legally and technically with examples.

2- THE CRITERIAS OF GIVING THE CERTIFICATES OF PATENT AND UTILITY MODEL AND PROCEEDINGS AFTER THE APPLICATION

The inventions that can be protected by giving patent must have altogether the criterias;
-Novelty in the world,
-Applicability in industry and
Inventive step (surpassing the State of Art)
kriterlerinin bir arada olması şarttır.

Faydalı model belgesi ile korunabilecek buluşlarda ise;
-Dünyada yenilik, ve
-Sanayiye uygulanabilirlik
The inventions that can be protected by Utility Model Certificate must have the criterias;

Any patent or utility model application is filed by submitting, abstract, description, claims including the elements for which the protection is requested and if any, the drawings, attached to the petition filled properly and signed, to Turkish Patent Institute. If there are no deficiencies with respect to formal requirements, the application is under process since this stage. If the said application is utility model application, upon the demand of application holder for early publication, the application is published immediately or after 18 months from the application (if any, from the priority date) and is opened to oppositions of the third parties. The application holder can change the description and claims of the said application before the certificate is granted, with the condition not to exceed (not to widen)the first scope of the application. He can unite some claims or can constrict the scope of protection by removing some claims. These changements can be done by the application holder, after opposition(s), also at any time before the certificate is given. The application holder can demand to grant him the utility model certificate despite the opposition(s).

It is understood from all these explanations that, the utility model certificate can be granted to the inventions that are not qualified to be protected with a utility model certificate as well. It is possible to grant the utility model certificate in 7-9 months, if early publication is demanded or if there is no opposition against the publication. In the circumstance that there is no demand of early publication, the period of giving the utility model certificate can increase to 24 months.

If the application filed for the protection of invention is a patent application, upon the early publication demand of the application holder after the deamd of search report, the application is published immediately or after 18 months from the application (if any, from the priority date). In case of filing a patent application, it is necessary to demand the preparation of a search report in its period (in 15 months from the application date, if any from the priority date). After the demand Search Report is prepared. After that, examination report(s) are prepared. The application holder can change the description and claims of the said patent application at any time (after the search report or at the stages receiving the examination reports), with the condition not to exceed (not to widen) the first scope of the application. He can unite some claims or can constrict the scope of protection by removing some claims.

The application holder can demand to grant him patent without (substantive) examination, despite the opposition(s) can be filed in 6 months as from the publication of search report. It is understood from here that, certificate of patent without (substantive) examination can be granted to the inventions taht cannot be protected by patent as well. The period of cabability of granting of patent without (substantive) examination changes between 2-3 years. This period changes according to the search association preparing the search report on behalf of Turkish Patent Institute.

In the Annex-1, come up the publication page and Search Report of the invention titled ” portable telecopier” with the publication nos PCT/GB99/03939 and WO 00/35184. The elements of the said application required to be protected is specified with 11 claims. When the search report is examined, it is understood that, claims 1-4 and 6-11 (1, 2, 3,4, 6, 7, 8, 9, 10 and 11) are in the catagory Y; meanly does not correspond the criteria of inventive step; in other words excluding the claim 5, other claims are not suitable for the criterias of granting patent. Granting patent without (substantive) examination to this application with this status and with this search report in Turkey is possible. The application holder can obtain patent, by considering the search report prepared, rearranging the claims (restricting the scope), in the condition not to widen the scopes of the claims and demanding examination.

In case of the examination report(s) prepared after the demand of examination report are positive, patent with (substantive) examination is granted. It is understood from here that, the patent granted as suitable to the criterias of granting patent is patent with (substantive) examination. In other words, patent with (substantive) examination is not granted to the inventions that are not suitable to the criterias of granting patent. The period of granting patent with (substantive) examination changes between 2-5 years. This period can be more (like 6-8 years) according to the associations of search and examination.

In the Annex-2, come up the publication page and Examination Report of the invention titled” balance system for legged robots with transfer of fluid” with the publication no PCT/TR 2003/00016 and WO 2004/030872. The elements of the said application required to be protected is specified with 17 claims. When the examination report is examined it is understood that;
The claims 3, 7 and 12 – 17 are new,
The claims 3, 7 and 13 – 17 correspond the criteria of inventive step,
All of the claims are applicable in industry.
Granting patent with (substantive) examination for the claims 3, 7, 13, 14, 15, 16 and 17 of this application in Turkey with this status of the claims and this examination report. The application holder can obtain patent, by considering the examination report prepared, by rearranging the claims (changing the scope), demanding examination again, receiving a positive examination report again for the changed claims.

In Annex-3 come up the publication page, Search Report and Examination Report of the invention titled “Traffic light showing the remaining lightning period” with the applicatio no. PCT/TR 02/00021 and publication no. WO 03/009252. The elements of the said application required to be protected is specified with 20 claims. When the Search Report is examined, it is understood that, all of the claims are not new because of two counter documents and do not correspond the criteria of inventive step, because of this reason it isn’t suitable for the criterias of granting patent. Granting patent without (substantive) examination to this application with this status and with this search report in Turkey is possible. The application holder decreased the number of the claims to 18 and provided his invention to grant patent by receiving the positive examination report stated in Annex-3. Said invention is protected by patent with (substantive) examination numbered 2003 02049 in Turkey.

3- THE COMPARATIVE EVALUATION OF PROTECTING THE INVENTIONS WITH PATENT AND UTILITY MODEL CERTIFICATES,

The differences between the patent and utility model certificates which are both related to the protection of inventions are summarized in the table stated below:

Utility Model Patent without examination Patent with examination
Criterias looked for Novelty in the world

Applicability in industry Novelty in the world
Applicability in industry
Novelty in the world

Is Search Report being prepared?

No Yes Yes

Is Examination Report being prepared?

No No Yes

Period of Protection

10 years 7 years 20 years

Is certificate given in case being not suitable to the criterias?

Yes Yes No

The period of procedures

8-24 months 1-3 years 2-5 years

4- THE PROTECTION SCOPE OF THE INVENTION PROTECTED BY PATENT OR UTILITY MODEL CERTIFICATE

The elements protected by patent or utility model, of any invention are explained in the part named Claims.

The provisions concerning claims are ruled in the articles 47, 83 and 84 of Decree Law No.551.

The protected elements of patent or utility model applicaitons or granted patent or utility model certificates are specified in Claim or Claims. According to the article 47 of Decree Law No.551 “The claim(s) may not extend beyond the inventionas specified in the description.” Article 83 is concerning to the interpreting of claim or claims. According to the provisions of this article; Claim or Claims shall be interpreted in consideration of the description and drawings. (1st paragraph) Claim or Claims shall be interpreted in such a manner so as to permit, on the one hand, a fair protection for the right holder of an application for patent or of a patent, while, on the other hand, providing a reasonable degree of certainty to third parties on the scope of protection. (2nd paragraph) Claim or Claims shall not be interpreted as being confined to their strict literal wording. However, for determining the scope of protection of the subject application for patent or of the patent, where those characteristics, though contemplated by the inventor, are not expressed in the claim(s) and where such characteristics can be only revealed from an interpretation of the description and drawings by a person skilled in that technical field, the claim(s) shall not be deemed to include/cover such characteristics. (4th paragraph) At the time of an alleged infringement, in determining the scope of protection conferred by an application for patent or a patent, all elements being equivalent to the elements as expressed in the claim(s) shall be also considered. (5th paragraph) (Equivalents Doctrine) Where, at the time when an alleged infringement is put forward, the equivalent element performs substantially the same function and performs such function in a substantially similar manner and gives the same result as the element as expressed in the claim(s), such element shall be, generally, deemed to be equivalent to the element as expressed in the claim(s). (6th paragraph) (Equivalents Doctrine). In determining the extent of protection, due account shall be taken of any statement made by the applicant during the patent granting procedure or by the holder of the patent during the term of validity of the patent. (7th paragraph) ( the restricting statements of application holder- file wrapper doctrine) Where a patent contains examples of the embodiment of the invention or examples of the functions or results of the invention, the claims shall not be interpreted as being limited to those examples. In particular, the fact that a product or process includes additional features, not found in the examples, disclosed in the patent, lacks features expressed in such examples or does not achieve every objective or does not possess every characteristic expressed in such examples shall not remove the product or process from the extent of protection conferred by the claims. (8th paragraph).

The interpretation of article 83 concerning interpreting of the claims is critically important. The basic principle in the interpretation of this article is, as explained in first and second paragraphs “Claim or Claims shall be interpreted in consideration of the description and drawings.”, and “Claim or Claims shall be interpreted in such a manner so as to permit, on the one hand, a fair protection for the right holder of an application for patent or of a patent, while, on the other hand, providing a reasonable degree of certainty to third parties on the scope of protection.

This basic principle is very important for evaluating both granting the patent and utility model certificates and demands of invalidity and circumstances of infringement. For the provision “In determining the extent of protection, due account shall be taken of any statement made by the applicant during the patent granting procedure or by the holder of the patent during the term of validity of the patent” stated in the 7th paragrapf of article 83 is patient to wrong interpretation, depending on like this kind of interpretation, the statements of holder of application or patent/utility model can open the way to widen the scope restricted by claims. This is extremely unfavorable. The statements mentioned in the scope of provision paragraph are not ht statements for widening the scope, on the contrary “the statements concerning constricting of the scope by application/certificate owner” during or after the proceedings. This provision must be understood as this way. For this approach is accepted as restricting statements of the right owner (file wrapper) doctrine in international implementations.

As an example to restricting statements doctrine, we can show a statement of the application holder during the proceedings of a patent application covering the claim stated below. Claim 1- Cup characterized by the cup side of handle or all of the surface being covered with rough material in order to prevent the slickness (increasing the friction coefficient ) of cup handles. If application holder of the said patent had a statement including ” If the whole handle is rough or made of roughened material it is out of the scope of claims” or ” this invention doesn’t include the cups have handle of which the whole handle is rough or made of roughened materials”, in this situation the cups have handle of which the whole handle is rough or made of roughened materials shall be out of the scope of protection. This situation is a subject which must be importantly evaluated in case of invalidity and infringement situations. Also the interpretation of the expressions explained in 4 and 5th paragraphs of article 83, “element which hase equivalent character” and “acception of the elements as equivalent which reveals the same result with the element demanded in the claims” is very important.

According to the doctrine called equivalents doctrine, the elements explained in any of the claims of an invention protected with patent and demanded to be protected is equivalent in function, tools and results.

As an example of equivalents doctrine, we can show a patent as assuming it is valid, of which claim 1 and the drawings stated below. When we evaluate claim 1 of the said patent in purpose, function, tools (elements) and result, we can determine the matters stated below:

PURPOSE: Removing the condensated water steam (evaporation) on glasses of cars

FUNCTION: Producing heat on a material by electric energy,

TOOLS/ELEMENTS:
Transparent material Preferably Cu or Al wire placed on material in different geometric shapes.

RESULT: Heating the produced glass, evaporating the condensated water steam again and keeping the heat of glass above the heat of condensation.

Lets evaluate the three alternative situations assuming that the said patent is validate.
Alternative 1: The wire is Fe or Ni or any alloy,
Alternative 2: Using a chemical composition in the pipe instead of wire, composing a chemical reaction by giving electric energy and producing heat
Alternative 3: Using a chemical composition in the pipe instead of wire, applying pressure as making a piston move by electric energy or mechanical way, composing a chemical reaction and producing heat

At first sight every three alternatives doesn’t contain the elements protected by the claim 1 exactly. In this situation it is not right to claim directly that there is no infringement. Because the elements that thought to be different must be evaluated in terms of purpose, function and result. Namely; in Alternative-1; the wire being copper (Cu) or aluminium (Al) instead of iron (Fe) or nickel (Ni) or any alloy musnt’t be evaluated as a difference
Becuase all of them are metal or metal alloy and equivalent. The existance of an infringement will be claimed considering the function and the result coming by are the same. If this difference produces an unexpected result, in this situation it is claimed that there is no infringement.

In Alternative-2; in the pipe chemical composition is used instead of wire, by giving electric energy to the composition chemical reaction is composed and by this way heat is produced. In this situation tools (elements) are not metal or alloy but chemical reaction. Together with the content of the composition is important, it can be evaluated as a different technical area application and although the result is the same, it can be told that there is no infringement.

In Alternative-3; in the pipe chemical composition is used instead of wire, by giving electric or by mechanical way a piston is being moved and pressure is applied, by pressure chemical reaction is composed and by this way heat is produced. In this situation tools (elements) are not metal or alloy but chemical composition. Together with the content of the composition is important, it can be told that there is no infringement because electric is not given to the composition directly, chemical reaction is produced by pressure and it is a different technical area application.

It is important to do all of these evaluations that must be done in situations of violation and infringement by the experts;
Both expert in the technical area that the invention is related,
And having enough information about the procedures of patent/utility model and the scope of protection
.

According to the provisions of article 84 arranged concerning the process patents in Decree Law 551 (in accordance with the article 34 of TRIPS), the obligation of proof belongs to the one claimed to infringe. In the 2nd paragraph of article 136 the provision that “the defendant who claims that he produces the product by not infringing the process is obligated to prove this” takes place. In this situation, firstly the matter that must be betrayed is, whether the patent is a process patent or not.

5- THE INVALIDATION CIRCUMSTANCES OF PATENT OR UTILITY MODEL CERTIFICATES

The invalidation of Patent and Utility Model are taken under provision by the articles 129, 130, 131, 165 of Decree Law 551.

The provisions concerning the right to obtain patent or utility model certificates and Assumption takes place in 11-15th Articles of Decree Law 551.

The last paragraph of article 165, concerning that the persons who did not raise objection against the publication of Utility Model Certificate cannot file the court action for invalidation, has been cancelled by the decision of Constitutional Court dated 23.03.2004 and merit 2001/1 and numbered 2004/36 that it has to be cancelled without the necessity of examining the subject according to the other rules of Constitution by the legal grounds that; the right to file a case takes place by stating in article 36 of Constitution that “Everyone has the right of litigation either as plaintiff or defendant and the right to a fair trial before the courts through lawful means and procedures.”, as it is stated in second section of second part of article 91 of Constitution, regulations cannot be made by decrees having the force of law except during periods of martial law and states of emergency, it is not possible to make the arrangement of right to file an action by the decree laws and the said paragraph is against the article 91 of Constitution. Accordingly, the precondition of filing a The court action for invalidation for Utility Model Certificate, urgency to object in the legal period of three months has been removed
, The court action for invalidation has become a case that everyone who had damage can file.

Subjects of invalidity of Patent and Utility Model Certificates are explicated below under the headlines; General provisions concerning the invalidity of patent General provisions concerning the invalidity of utility model certificate and invalidation demands,
Invalidation demands of patent with examination,
Invalidation demands of patent without examination,
Invalidation demands of EPO patent,
Claims concerning that there is no infringement ( negative clearance)

3.1- General provisions concerning the invalidity of patent certificate and invalidation demands
General provisions concerning the invalidity of patent state in the articles 129, 130 and 131 of Decree Law 551. When the provisions in these articles are evaluated together;

For the invalidity of patent, it is necessary to prove that,
Subject of the patent doesn’t have the conditions of patentability mentioned in articles 5 to 10,
The invention is not defined clearly and completely enough to make possible that an expert in the technical area related to the subject of the invention can put into practice,
The subject of the patent goes beyond the scope of the application filed or depends on an application devided according to the article 45 concerning the integrity of invention or an application filed according to the article 12 concerning the assumption of demanding patent and goes beyond the scope of those;
The owner of the patent doesn’t have the right to demand patent according to the article 12 concerning the assumption of demanding patent.
ispat edilmesi gerekir.

The claim that patent owner doesn’t have the right to demand patent according to the article 11 concerning the demand of to obtain a patent can only be alleged by the inventor or his subrogees. In this situation, article 12 of this Decree Law concerning the assumption of demanding patent shall be applied and the right owner can,
Demand that the former patent application subject to the case of assumption to be accepted and proceeded as his own application, or
File a new patent application for the same invention by using the same priority right ( This application shall be proceeded as from the date of first application. In this situation, the application that is the subject of the assumption shall be invalidated.) or,
Demand the refusal of the patent application subject to the assumption.

The demand for invalidity of patent can be made for some claims of the patent. This demand means the partial invalidity of patent. But, partial invalidity of any claim cannot be demanded, even if it is demanded any claim cannot be invalidated partially.

Invalidity of patent can be demanded by related public authorities and the persons have right to obtain patent related to the same invention through Public Prosecutors.

The Court action for the invalidation of a patent may be instituted during the term of protection of same or within five years subsequent to the termination of patent right. This provision means it shall be demanded until 5 years after than the ending of patent right by any reason (such as termination of the period of patent, not paying the annual fees).

Registry as the owner of the patent in the time that the case is filed.The court action for invalidation of patent shall be filed against the person registered to the Patent

Registry as the owner of the patent in the time that the case is filed.

In case of a decision of invalidity of patent, the result of the decision rises effective to the past and the protection provided legally to patent or patent application shall be respected as not rised in the scope of invalidity.

a-The decisions which are legally definite and enforced given by the reason of infringement to a patent, before the patent is invalidated;
b-The contracts that has been made and applied before the decision of invalidity of patent, (but, according to the situations and conditions, it is possible to return the cost paid according to the contract by fair causes and with the thought of equity,partially or completely)
etkilemez.

3.2- General provisions concerning the invalidity of utility model certificate and invalidation demands
General provisions concerning the invalidity of utility model certificate state in the article 165 of Decree Law 551. When the provisions in this article are evaluated;

For the invalidity of utility model certificate, it is necessary to prove that;

a - The subject of the utility model certificate is against the provisions stated in the articles 154, 155 and 156 concerning the criterias to give utility model certificate,
b – The invention is not defined clearly and completely enough to make possible that an expert in the technical area related to the subject of the invention can put into practice,
c – The subject of the utility model goes beyond the scope of the application filed or depends on an application devided according to the article 45 concerning the integrity of invention or an application filed according to the article 12 concerning the assumption of demanding patent and goes beyond the scope of those;
d – The owner of the utility model doesn’t have the right to demand utility model according to the article 157 concerning the assumption of demanding utility model.
ispat edilmesi gerekir.

The court action for invalidation of utility model certificate can be filed;
By third persons who had damage or related public authorities through Public Prosecutors,
By persons who have right to demand utility model certificate.
.

The claim that utility model owner doesn’t have the right to demand utility model according to the article 157 concerning the demand of to obtain a utility model can only be alleged by the inventor or his subrogees. In this situation, article 12 of this Decree Law concerning the assumption of demanding patent shall be applied and the right owner can, Demand that the former utility model application subject to the case of assumption to be accepted and proceeded as his own application, or File a new utility model application for the same invention by using the same priority right ( This application shall be proceeded as from the date of first application. In this situation, the application that is the subject of the assumption shall be invalidated.) or, Demand the refusal of the application subject to the assumption.

Third paragraph of the article 165 of Decree Law 551 commands the provision that “In order to qualify to request the invalidation of the utility model certificate, third parties suffering damage/prejudice and the interested official authorities/bodies must have raised opposition in compliance with the provisions of Article 161(concerning the objection after the publication of utility model certificate).” With another statement this provision means “the ones that haven’t raised opposition against the publication of utility model certificate (excluding the ones have the right to request utility model) cannot file court action with a demand of invalidation. However, by Bursa Commercial Court Of First Instance the subject had been submitte

However, by Bursa Commercial Court Of First Instance the subject had been submitted to Constitutional Court by the claim that third paragraph of the article 165 of Decree Law 551 is against the Constitution and as explained above said article (Decree Law 551, article 165, third paragraph) had been cancelled by the decision published on the Official Gazette dated 21.04.2004 and numbered 25440 of Constitutional Court. In this situation, the way of filing a court action for invalidation had been opened to the ones who had not raised an objection against the publication of utility model certificate.

The invalidation of the utility model certificate may be requested, at any time, during its term of protection as different from the situation of patents. But for patents, the court action for the invalidation of a patent may be instituted within five years subsequent to the termination of patent right.

The demand for invalidation of a utility model may be made for some claims of the utility model, as it is for patents. This demand means the partial invalidation of the utility model. But, partial invalidity of any claim cannot be demanded, even if it is demanded any claim cannot be invalidated partially. In the court action filed for invalidaiton of a utility model certificate, in case of the case is recorded to Turkish Patent Institute Official Patent Registry upon the demand of plaintiff and published in the Official Patent Bulletin, the owner of the Utility Model Certificate cannot claim his rights coming from the uitility model certificate against third parties until the case is concluded. However in this situation the matter that must be considered is compensation of the damages he had if he had proved correct in the conclusion of the case. Because in the same article, if the owner of the certificate has damages, the provisions concerning the compensation of these damges are saved.

As explained above, for the utility model applications despite of the objections, certificate may be given. Concerning this situation in the last paragraph of article 165 “Where the utility model certificate is issued without taking into consideration the motivated oppositions raised by third parties and where, on grounds of causal relation with the opposition raised, the court has decided to invalidate the utility model certificate, third parties having raised opposition and suffered damage/prejudice shall have the right to claim compensation from the holder of the invalidated Utility Model Certificate.” İs commanded under provision.

3.3- The demands of invalidation of patent with examination
Concerning a granted patent with examination, there isn’t any proceeding (registry of annual fee payments, assignment, license e.t.c.) before TPI related to granting the patent. In scope of the provisions stated in articles 129, 130 and 131 of Decree Law 551 the court aciton for invalidaiton of a patent with examination may be opened before charged or authorized Court and the partial or complete invalidation of the patent or the refusal of the case is decided by the Court.

Before making the evaluations concerning the demands of invalidation of patent without examination, the matters; Ground of the patent without examination, The proceedings until and after the patent without examination is granted, The applicability of demand of invalidation of patents to patents without examination must be explicated.

The purpose and the ground of patent without examination;

The main purpose of granting patent without examination after the application holder has received the search report, can be lined up as;
By having detailed information about the patentability of the invention, providing time for making the necessary plans and analysis for producing and marketing the product subject to the invention,
Providing possibility to suspend the demand of examination by paying the fees of examination later,
.

When these grounds and purposes are considered, it appears clearly that, the system without examination is actually not the system that giving every kind of right obtained with the patent to the application holder without examining the application, but only the right to suspend the examination proceeding which is one of the stages that to obtain the possible rights provided with patent. Because the application holder, by demanding patent without examination after receiving the search report, may suspend the examination demand necessary for granting a patent with examination, with a period of 7 years from the application and by this way, howsoever the content of the search report is, he can obtain patent without examination. Patent without examination is shortly nothing but, suspending the patent that must be given with examination and the rights coming from that, for a 7 years period. Even thinking that a patent granted without examination provides equal rights with a patent granted with examination is not possible.
incelemesiz patentin verildiği ana kadarki işlemler ile sonraki işlemler,

The proceedings until and after the patent without examination is granted,

The provisions concerning granting a patent without examination is defined in article 60 of Decree Law 551. According he provisions of this article,

Third parties may submit to the Institute their observations on the contents of the Search Report within six months from the date of publication of same in the form prescribed in the Regulation by enclosing thereto the relevant documents. Upon the expiry to the period allowing third parties to submit their observations on the search report, the Institute shall notify the applicant the written observations on the search report together with the documents in evidence thereof submitted by third parties. The applicant may, within three months from the date of notification of the observations made by third parties, make the observations on the search report he deems relevant for opposing the observations of third parties on the search report and may, if he deems it necessary, amend the claim(s). The Institute decides to grant the patent without (substantive) examination following the expiry of the time-period without taking into consideration that whether the holder of the application submit his observations, if the system with examination is not chosen and the examination demand is not submitted. Upon the payment of the necessary fees in compliance with the decision reached, the Institute, shall issue the patent for a term of seven years and shall publish the issuance of same in the related Bulletin. It is understood from here that, eventhough the application holder doesn’t make observations on search report or objections if any and also doesn’t demand to be granted patent without examination, moreover even if the invention subject to the application is an invention that is not proper to the criterias of granting patent in anyway, if he pays the necessary fees (annual and certificate fees), patent without examination can be granted “without guaranteeing the reality and the utility of subject of the patent by government.”

In addition to these explanations and comments the provision in the second paragraph, article 70 of Decree Law 551 that “The lack of novelty or of inventive activity/step of the patent granted without (substantive) examination shall not constitute the subject of such objection” must be also considered. This provision shows that, patent without examination is granted to not only the patent applications that are not proper to the criterias of granting patent, but also at the same time to the applications against the proceedings related to granting patent in formal way.

According to the provisions of article 60 of Decree Law 551, in order to examine a patent granted without examination, demand must be submitted. This demand shall be filed, by the patentee or by third parties, within seven years, at the latest, from the date of filing of the application. The (substantive) examination fee shall be paid by the party having filed the request for substantive examination.

When the request for substantive examination is not filed within seven years, at the latest, from the date of filing, the patent (right) shall expire. After the expiry of the period of seven years, no request for substantive examination may be filed. According to the provisions of article 60 of Decree Law 551, the provisions of Article 62 pertaining to granting of patent with (substantive) examination shall apply where a request for substantive examination is filed within seven years, at the latest, from the date of filing of the application. In order to enable third parties to raise objections as of the patentability requirements, in accordance with the provisions of Article 62, paragraph two, the request for substantive examination filed in respect of a patent granted without (substantive) examination shall be published in the related Bulletin.

The matter appearing from all these explanations is that, patent without examination is a patent application against which objection cannot be raised by claiming that it is not suitable for criterias of granting patent or against the patent proceedings formally, only concerning to itself examination demand can be made, only of which the proceedings are suspended for a period.

The applicability of provisions pertaining the invalidity of patents to the patents without examination covers the articles 129, 130 and 131 of Decree Law. These articles covers the provisions concerning the invalidity of patents and haven’t make a distinction whether the patent is with or without examination. When we review the subject according only article provision, it is understood that, the court action for invalidaiton of a patent granted without examination can be filed before charged or authorized Court and the partial or complete invalidity of patentor the refusal of the case can be decided by the Court.

As it is explained above, concerning a patent granted without examination, according the 7th paragraph of article 60 of Decree Law 551, it is possible to submit the examination demand by patent owner or third parties during the term of patent (7 years). After tihs demand is submitted, according to the provisions of article 62 the proceedings of patent with examination system is applied. As a result of the examination if the report(s) is positive, the patent converts to patent with examination, if it is negative patent is not granted, namely the right of patent granted without examination ends.

It is necessary to answer the question “Concerning the patent granted without examination accordingly the application holder or third parties have the right to demand examination before TPI and this way is always usable, may a court action for invalidation concerning patent granted without examination be filed?” Because the examination of the said patent hasn’t been performed. Besides, in case of filing a court action for invalidation concerning a patent granted without examination, if at the same time patent holder or third parties request the examination of patent, at the same time two seperate examination proceedings shall be executed about the granting the patent or not, by the Court and also on the other hand by TPI ( by the international examination associations on behalf of TPI). If the results of both of two proceedings are different, there will be a kaos. If the situation is explicated from this aspect, it can be thought that concerning patent granted without examination a court action for invalidation mustn’t be filed, in stead of that the demand for examination must be made before TPI. However, even if it is granted without examination, patent certificate is a effectual document. Because the invalidaiton of this certificate given by TPI may only be decided by the Court, it shall be necessary to demand the invalidation of granted patent without examination from the court. At this stage, the invalidation of a granted patent without examination may be requested from the Court and while a case like this is pending, if the application holder or third parties demand examination from TPI, the Court can make the result of the examination prejudicial issue and may decide after the examination report is received.

Besides all these matters, concerning a patent granted without examination whether a court action for invalidation is filed against, patent holder or the third parties may request examination before TPI in the term of 7 years. This examination is the first but not the last examination. Because demanding the second and following examinations are possible. There is no clear provision in scope of provisions of Decree Law 551 concerning the patent without examination, the examination demands after the first examination demand by third parties may be also done by third parties or not.

As separate from all these evaluations there is a decision of Court of Appeals for the 11th Circuit dated 25 April 2002 and 2002/81 base and numbered 2002/3895 concerning that a court action for patent without examination may be filed. This decision is concerning to the invalidity of a patent given according to the system without examination. The conclusion coming from this decision of Supreme Court of Appeals is that court action for invalidation of patent without examination may be filed.

3.5- Invalidation demands of EPO patent
As it is known, Turkey had become a party to European Patent Convention since November 1, 2000. According to the provisions of this Convention, patent applications filed after November 1, 2000 before European Patent Office (EPO) and patents of which all search and examination proceedings shall be performed and granted by European Patent Office ve Turkey is one of th designated states showing the scope of protection, are patents which are effectual like as granted in Turkey. The situations that European Patents are effectual in Turkey are explained below under the headlines;

The applications effectual in Turkey which are filed before EPO and published by EPO
Patent effectual in Turkey which is an European Patent granted by EPO
-EPO tarafından verilmiş bir Avrupa Patentinin Türkiye’de hüküm ifade etmesi,
başlıkları altında aşağıda açıklanmaktadır.
EPO’ya başvurusu yapılmış ve EPO tarafından yayınlanmış başvuruların Türkiye’de hüküm ifade etmesi,

The applications effectual in Turkey which are filed before EPO and published by EPO; For an European Patent application filed before EPO and published by EPO to be effectual in Turkey, it is necessary to be submitted the Turkish translation of the claims of said application to Turkish Patent Institute and to be published in Official Bulletin by TPI (T3 kind of publication). Beginning from this stage, said application has right for temporary protection and it provides the application holder to use his rights rising from the application. This is not a granted European Patent. Patent effectual in Turkey which is an European Patent granted by EPO;

The applications effectual in Turkey which are filed before EPO and published by EPO;

In order to be effectual in Turkey of an European Patent granted by EPO and of which Turkey is one of the designated states for scope of protection, within 3 months from the publicaiton of grant of patent in EPO bulletin, the Turkish translation of description, claims and abstract and figures msut be submitted to Turkish Patent Institute and the fascicle of granted European Patent must be published in Official Patent Bulletin (T4 kind of publication) by TPI. Beginning from this stage, said European Patent is proceeded as a patent granted in Turkey and provides the patent holder to use his rights rising from the application in Turkey .

Because the proceedings of applications filed before EPO and published by EPO are executed by EPO, the proceedings related to these applications must be executed before EPO in the scope of European Patent Convention. The claim concerning that an European Patent at application stage doesn’t have the criterias of granting patent only may be submitted to EPO as a third part opinion. This is not an objection but only a third part observation. EPO considers this observation if sees necessary.

In case of the acceptance of objection before EPO, said patent shall be partial or completely invalidated in all countries that is granted according to the decision given. If the court action for invalidation in Turkey is accepted and partial or completely invalidity of the patent is decided,

this decision shall be valid only in Turkey and the patent continues to be valid in other countries granted.

6- THE SITUATIONS OF VIOLATION AND INFRINGEMENT

The situations of violation and infringement concerning the rights conferred by a Patent and Utility Model are commanded under provision in article 136 of Decree Law 551.
According to article 136 the acts shall be considered infringement of rights conferred by a Patent and Utility Model, without the consent of the patent holder are;
a/ Imitating; by producing in whole or in part of a product, subject of the invention,
b/ Selling, distributing or commercializing in any other way, or importing for such purposes of products or keeping them in possession for commercial purposes or using by applying such products, manufactured as a result of an infringement,
c/ Using the patented process or selling, distributing or commercializing in any other way or importing for such purposes or using by applying the products directly obtained through such patented process;
d/ Enlarging the scope of the rights granted by the patent holder on the basis of a license(s), without permission;
e/ Participating in acts stated above, or assisting or inducing/encouraging them or facilitating, in any way and under any circumstances, their occurrence/perpetration;
f/ Refraining from declaring the source from where and the manner how the products, found in possession and manufactured or commercialized, unlawfully, were obtained.

The legal sanctions concerning the rights conferred by a Patent or Utility Model in the situations of violation and infringement are commanded under provision in articles 146, 137, 150, 151, 152, 153, 138, 139, 140, 141, 142, 143, 144, 145 and 147 of Decree Law 551.

The demands of holder of Patent/Utility Model (or application holder) in the scope of legal cases from the Court are commanded under provision in article 137 of Decree Law 551. According to these provisions holder of Patent/Utility Model or application holder may demand fom the Court;

a- For the cessation of the acts in infringement of right conferred by a patent,
b- Appeal for remedies of infringement and request for compensation of material and moral damages/prejudices incurred,
c- Request the confiscation of products manufactured or imported, in infringement of rights conferred by a patent, of means directly used in manufacturing such products and of means permitting the use of a patented process,
d- Appeal for the proprietorship over the products and means confiscated in accordance with subparagraph three of this present paragraph. In such case, the value of said products shall be deducted from the amount of compensation awarded. Where the value of said products happen to be above the amount of compensation awarded, the proprietor of the patent shall repay the excedentary balance to other party.

e- Appeal for precautionary measures for preventing the continued infringement of rights, conferred by a patent, especially modifying the shapes of the products and means, or, where inevitable for the preclusion of acts of infringement, the destruction of the products and means confiscated according to subparagraph three of this present paragraph.
f- Request the disclosure by means of publication, to the public and to those related, of the court’s judgment rendered against the party infringing the rights conferred by a patent who shall bear the costs for such publication.

The provisions about “detection of infringement” and “request for temporary injunction and the characteristic of temporary injunction” of the person(s) authorized to claim the rights conferred by patent/utility model application or granted patent/utility model certificate are commanded under provision in articles 150-153 of Decree Law 551.

In the requests of detection of evidence (infringement) and temporary injunction, the matters stated below must be evaluated firstly.

If the ground for claiming the said right is a patent/utility model application, it is a must to search and evaluate ;

-
-If the ground for claiming the said right is a patent/utility model application, it is a must to search and evaluate ;
-Whether the patent/utility model application subject to the case is published in related Bulletin or not,
-If it hasn’t been published, whether the person claimed to infringe, is aware of the application or not,
-What are the claims and the scope of the claims that include the protected elements of invention as from the publication date (or informing the person concerning)
-If the subject of the case is patent application, whether the search and examine report is prepared or not,
-Whether the whole annual fees are paid in due time ,or not, -
-Whether the plaintiff is right owner or not,

If the ground is patent or utility model certificate it is a must to search and evaluate;
-If it is a patent, whether it is granted with or without examination,
-If it is a utility model, whether an objection filed against or not,
-What are the claims and the scope of claims of the granted patent/utility model,
-Whether the whole annual fees are paid in due time ,or not,
-Whether the plaintiff is right owner or not,

After these search and evaluations, the product(s) claimed to violate or infringe and the claims including the protected elements of published (or submitted to the information of concerning person) patent/utility model application/ certificate and must be examined as separately and comparatively. Here the matter that must be considered is to compare the product claimed to infringe and the claims of the patent/utility model is necessary. Comparison of the products belong to both sides may lead to a mistake.

All of the search, examine and evaluations explained above must be performed diligencely not only at court actions demanded detection or temporary injunction but also at compensation demanded legal actions and criminal actions too.

3- THE IMPORTANCE AND THE ROLE OF TECHNICAL EXPERTS (EXPERT WITNESS) AT COURTS
Concerning the rights of patent or utility model, before the role of technical experts at Courts are explicated, especially, it is necessary to explicate the matters that must be evaluated at invalidation and infringement actions.

-At the court actions concerning the invalidation of granted patent or utility model; according to the demands of plaintiff it is necessary to examine;
-As examining comparatively the subject of the patent/utility model with the documents submitted to the file, whether it has the conditions of patentability or not,
-Whether the subject of the patent/utility model is defined clearly and completely enough to make possible that an expert in the technical area related to the subject of the invention can put into practice or not,
-Whether the scope of the patent/utility model certificate granted goes beyond the scope at the first stage of the application or not,
-In case of depending on an application (devided application) devided concerning the principle of integrity of invention, whether the scope of the patent/utility model certificate granted goes beyond the scope at stage of first application or not,
-In case of assumption of the right obtaining patent, whether the scope of the patent/utility model certificate granted goes beyond the scope at the first stage of the application or not.

In this examination it is necessary ;

Evaluating technically, the documents published before application or if any, priority date or submitting to public by any way (like production or sales) with the first scope of patent/utility model application. Evaluating whether the description and claims are written clearly and understandable and applicable by a technical expert in relevant subject or not, By comparing technically the scope of the granted patent/utility model and the scope of first application, evaluating the differences of scope technically.

In detection of infringement excluding the invalidation demanded court actions it is necessary to examine; Whether the product subject to patent/utility model is imitated by being produced partially or completely. If the subject of the patent is process (the inventions related to process cannot obtain utility model), whether the process protected is used or the products are obtained by the process directly subject to the patent or not.

In this examination it is necessary; Determining the scope of protection of patent/utility model, comparing the claims technically with the product’s claimed to infringe, Examining one by one technically, whether the elements under protection explained in the claims exist in the product(s) of the one claimed to infringe, detecting whether any partial (for some claims) or completely (for all claims) infringement exists or not, If the subject is a patent concerning process, determining the cope of the process under protection, evaluating the other processes existing for producing the same product, searching whether also by other processes the same product may be produced likewise or not.

Tüm ve bu inceleme ve değerlendirmeler sadece konuda uzman teknik bilirkişiler tarafından yapılabilir. Bu nedenle, Mahkemelerde patent ve faydalı model hakları ile ilgili davalarda (özellikle hükümsüzlük ve tecavüz davalarında) teknik bilirkişilere gereksinim vardır.
Ancak buradan, konuda uzman her teknik kişinin Mahkemelerde bilirkişilik yapabileceği anlamı çıkartılmamalıdır. Zira Mahkemelerde bilirkişilik yapacak teknik kişilerin aynı zamanda patent ve faydalı model işlemleri, araştırma raporları, itirazlar, inceleme raporları, araştırma raporu ve inceleme raporuna verilen cevaplar (karşı görüşler), istemlerde yapılan değişiklikler gibi uygulamalar hakkında da bilgi sahibi olmaları önemle gerekmektedir. Aksi takdirde eksik inceleme söz konusu olabilir.

For this reason, technical experts both ve technical information and experience about the subject and have information about applications of patent/utility model are importantly needed at the cases concerning patent and utility model rights.

4- THE ROLE OF THE PATENT INSTITUTE AT THE COURT ACTIONS
Turkish Patent Institute has been established on June 24, 1994 by the Decree Law 544. The Decree Law 544 is changed by the Law Code 5000 on 19.11.2003. The duties of TPI is taken under provision in the 3rd article of the Law Code numbered 5000. Subparagraph (b) of 1st paragraph of this article commands the provision that “act as a mediator in the cases of compulsary licensing and act as technical advisors at the courts”

Both because of this provision and knowing the patent applications very closely and especially because they can comment the claims including the protected elements best, patent experts, vice patent experts, engineers and managers who have technical information and experience and concerning the legal subjects legalists who have duty at Turkish Patent Institute Legal Department may be expert witnesses at the Courts in the actions concerning the infringement to the patent/utility model rights. Detailed explanation about the technical experts at the courts are stated below.

The experts and legalists of Turkish Patent Institute musn’t be expert witnesses at the court actions to which Turkish Patent Institute is a side and at the actions of invalidation of granted patent or utility model.

5- EXPERT ADJUDICATORS AND PUBLIC PROSECUTORS

The proceedings about patent and utility model rights;
Has technical content like;
Description of the invention technically (description and figures)
Technical elements in the scope of protection (claims),
Search Report
Examination Report
Replies to the reports
Objections
Former documents submitted in the files
Has legal content like;

Right for obtaining patent
Assumption of the right
Periods concerning the proceedings
Rights of assignment, licence e.t.c.

For this reason, for the disagreements concerning the patent and utility model rights it is important to charge expert adjudicators and public prosecutors having at least general information about the subjects above and having enough experience to evaluate these documents in general terms. In case of expert adjudicators and public prosecutors being charged in the actions concerning the patent and utility model rights, the subject may be solved most of the time in circumstances that very clear documents states in the file, without the necessity of a technical expert.

For example, an infringement court action depending on a patent/utility model of which the annual fees haven’t been paid an for this reason it has become no longer valid or invalidation court action of such a patent/utility model shallbe refused without going to a technical expert. Or it may not be necessary to send an infringement court action filed depending on a patent application of which the examination reports are negative in every way(for all the claims in the application or the claims which have been changed later) to the technical expert.

If expert adjudicators and public prosecutors define the duty given to technical expert (or technical expert board) as clearly and demand reports from technical expert in specific points, it shall reveal the situation.

6- INTERACTION BETWEEN PATENT ATTORNEYS AND ATTORNEYS AT LAW
As known, the authority of representing the plaintiff and the defendant side by proxy at the Courts belong to only Attorneys At Law. The authority of acting for necessary procedures on behalf of applicants before Turkish Patent Institute belong to Patent and Trademark Attorneys. Attorneys At Law may become Patent and Trademark Attorney and perform this duty with the condition to complete the necessary proceedings.
It is obvious that besides these legal truths, in the cases concerning to the rights of patent and utility model technical matters are much (nearly every time) in the forefront. As explained in detail above according to the characteristic of the court action, it is importantly necessary that attorneys at law and patent attorneys cooperate in the subjects like;

-It is obvious that besides these legal truths, in the cases concerning to the rights of patent and utility model technical matters are much (nearly every time) in the forefront. As explained in detail above according to the characteristic of the court action, it is importantly necessary that attorneys at law and patent attorneys cooperate in the subjects like;
-Commenting the description and claimsand determining their scopes,
-Comparative evaluations of the documents claimed with former date,
-Comparison of the products with claims,
-Commenting the search and examination reports,
-Technical evaluation of the documents in file of proceedings including the patent procedures.
-For court action of invalidation, searching the similar documents before and evaluating technically.
-Preparing counterviews (objections) by making technical evaluations,
-Evaluating the counterviews against technical exper reports of opposite side and preparing technical counterviews against them.

By this way the possibility for getting a positive result in the court actions executed by a coordination of Attornet at Law- Patent Attorney is always high.

Sunum, Av. Samiye Eyuboğlu ve Uğur Yalçıner tarafından gerçekleştirilmiştir.

INVALIDITY OF THE PATENT VE UTILITY MODEL CERTIFICATES AND CIRCUMSTANCES OF INFRINGEMENT