Patent protection forms the cornerstone of innovation-driven businesses in Turkey’s rapidly evolving market. However, not all granted patents meet the stringent legal requirements for validity. Patent nullity lawsuits serve as a critical legal mechanism to challenge improperly granted patents, ensuring fair competition and protecting genuine innovation rights.
Intellectual Property (IP) is the lifeblood of innovation, and securing a patent in Turkey provides a crucial monopoly over your invention. However, a registered patent is not immune to challenge. Competitors, or any interested third party, may initiate a Patent nullity lawsuit (Hükümsüzlük Davası) to request the retroactive invalidation of a granted patent. This legal process is a critical element of the Turkish IP landscape, governed primarily by the Industrial Property Law No. 6769.
Table of Contents
- Understanding Patent Nullity in Turkish Law
- FAQs on Patent Nullity Lawsuits in Turkey
- 1. Who can file a Patent Nullity Lawsuit in Turkey?
- 2. Is there a time limit for filing a Patent Nullity Lawsuit?
- 3. What is the effect of a successful Patent Nullity Lawsuit?
- 4. How long does a Patent Nullity Lawsuit typically take?
- 5. Is a warning letter or mediation required before filing a nullity lawsuit?
- Contact us for Patent Nullity Lawsuits in Turkey
Understanding Patent Nullity in Turkish Law
Patent nullity refers to the legal process of invalidating a previously granted patent through judicial proceedings. Under Turkish Patent and Trademark Law No. 6769, patents can be declared null and void if they fail to meet fundamental patentability requirements at the time of application.
The Turkish Patent and Trademark Office (Türk Patent) initially examines patent applications, but their examination may not catch all deficiencies. Patent nullity lawsuits provide a safeguard mechanism where interested parties can challenge patents that were improperly granted.
The Competent Courts for Patent Nullity Actions
In Turkey, patent litigation, including nullity lawsuits, falls under the jurisdiction of specialized courts. These are the Intellectual and Industrial Property Rights Civil Courts (IP Courts).
- These specialized courts exist in major cities like Istanbul, Ankara, and Izmir.
- In other cities, the designated Civil Court of General Practice is authorized to handle these disputes.
The location of the competent court is typically determined by the patentee’s domicile. If the patentee is domiciled abroad, the court is often determined by the registered patent attorney’s office location.
The 7 Critical Grounds for a Patent Nullity Lawsuit
Under the Turkish Industrial Property Law No. 6769, a patent may be wholly or partially revoked (declared null and void) if it is successfully proven that the patent fails to meet one or more of the statutory requirements. The primary grounds for nullity are:
1. Lack of Patentability Requirements
This is the most common and robust ground for nullity, covering the fundamental criteria for any Turkish patent:
- Lack of Novelty: The invention was already made available to the public anywhere in the world before the filing date or priority date of the patent application.
- Lack of Inventive Step: The invention is obvious to a person skilled in the art in light of the prior art.
- Lack of Industrial Applicability: The invention cannot be made or used in any kind of industry, including agriculture.
2. Insufficient Disclosure
The invention must be described in the patent application in a manner sufficiently clear and complete for a person skilled in the art to carry out the invention. If the description is vague or incomplete, a nullity action can succeed.
3. Overstepping the Scope of the Application
A patent is invalid if the subject matter of the patent exceeds the scope of the initial application as filed or the scope of the divisional application. This prevents applicants from adding new invention elements during the examination phase.
4. Scope of Protection Exceeded
The scope of protection conferred by the patent has been extended during the grant procedure. The claims, which define the scope of the patent protection, must not go beyond the content of the initial application.
5. Subject Matter Not Patentable
The subject matter of the patent falls into one of the non-patentable categories as defined by law. This includes certain inventions contrary to public order or morality, or specific methods like diagnostic, therapeutic, and surgical methods for humans or animals.
6. Entitlement Issues
A person other than the true inventor or the person/entity legally entitled to the patent filed the application. The party initiating the nullity action must be the person/entity truly entitled to the patent.
7. Patentee Not Entitled (For Partial Nullity)
This ground is used when the patent belongs jointly to several persons, but not all of them are named as proprietors in the register. It typically leads to partial nullity concerning the non-entitled proprietor.
The Nullity Lawsuit Procedure
A nullity lawsuit is a civil action that commences with the filing of a petition before the competent IP Court.
Pleadings Phase
This involves the exchange of written petitions between the plaintiff (the party seeking nullity) and the defendant (the patentee). Each side presents their facts, arguments, and evidence regarding the patent’s validity. This phase adheres strictly to the Turkish Code of Civil Procedure.
Expert Examination and Hearings
Given the highly technical nature of patent disputes, Turkish IP Courts almost always appoint a Panel of Experts. These experts, who possess technical knowledge in the relevant field, review the case documents and provide a report to the court assessing the grounds for nullity, particularly the criteria of novelty, inventive step, and industrial applicability.
The court heavily relies on the expert report. Interested parties should seek specialized legal advice to ensure their case is effectively communicated to this panel.
Judgment and Appeal
If the court finds one or more nullity grounds to be proven, it will issue a decision declaring the patent null and void ab initio (from the beginning). The court’s decision can be appealed, first to the Regional Courts of Justice and subsequently to the Court of Appeal (Yargıtay). The entire process can be lengthy, often taking several years.
Strategic Considerations for Nullity Actions
When planning a nullity lawsuit or defending against one, strategic legal representation is vital.
- Burden of Proof: The plaintiff generally bears the burden of proof to demonstrate that the patent lacks the required legal standards.
- Counter-Action: A nullity action can be filed as a standalone case or as a counterclaim within an ongoing patent infringement lawsuit. This is a common defensive strategy.
- Partial Nullity: If only a certain claim or part of the invention is invalid, the court may declare a partial nullity, keeping the rest of the patent in force.
- International Context: With the rise of the Unified Patent Court (UPC), the interplay between Turkish law and European patent law is becoming increasingly complex.
FAQs on Patent Nullity Lawsuits in Turkey
1. Who can file a Patent Nullity Lawsuit in Turkey?
Any person with a legal interest in the nullity of the patent can file the lawsuit. This typically includes competitors, parties accused of infringement (as a counterclaim), or the Turkish Patent and Trademark Office (TPTO) under specific, limited circumstances.
2. Is there a time limit for filing a Patent Nullity Lawsuit?
No. Unlike some other IP actions, there is no statutory limitation period for filing a Patent Nullity Lawsuit in Turkey. The action can be filed at any time during the life of the patent (20 years) or even after it has expired, provided there is a legal interest.
3. What is the effect of a successful Patent Nullity Lawsuit?
A patent that is successfully challenged is deemed null and void ab initio, meaning it is considered never to have existed. This nullity takes effect against everyone (erga omnes) and is generally retroactive.
4. How long does a Patent Nullity Lawsuit typically take?
The duration can vary based on the complexity and court workload, but first-instance proceedings in the Turkish IP Courts typically take 2 to 4 years. Appeals can add another 1 to 2 years to the process.
5. Is a warning letter or mediation required before filing a nullity lawsuit?
No, filing a warning letter is not a prerequisite for initiating a nullity lawsuit in Turkey. However, while mandatory mediation applies to certain commercial disputes, patent nullity actions often proceed directly to the IP Court.
6. Can I amend my patent claims during a nullity lawsuit?
Yes, the patentee (defendant) has the right to request amendments to the patent claims during the course of the nullity lawsuit to overcome the objections and limit the scope of protection, provided the amendments comply with the original disclosure.
7. Which Turkish law governs Patent Nullity Lawsuits?
The main legal framework is the Industrial Property Law No. 6769, which came into force in 2017, along with the general procedural rules of the Code of Civil Procedure (Law No. 6100).
Contact us for Patent Nullity Lawsuits in Turkey
Patent nullity lawsuits represent a powerful legal tool for challenging improperly granted patents that threaten fair competition and genuine innovation. Whether you’re facing an invalid patent blocking your market entry or need to defend your patent against nullity challenges, understanding Turkish patent law’s intricacies is essential for success.
The specialized nature of patent nullity litigation demands experienced legal counsel with deep technical knowledge and courtroom expertise. Strategic planning, thorough evidence preparation, and skilled advocacy make the difference between successful and unsuccessful outcomes in these high-stakes proceedings.
Contact Akkas & Associates Law Firm today for expert guidance on patent nullity lawsuits, patent validity challenges, and comprehensive intellectual property litigation services in Turkey.
With over three decades of experience since 1992, we have successfully handled more than 140 patent registrations and represented clients in complex IP litigation matters. Our multilingual team provides strategic counsel on patent enforcement, patent invalidity proceedings, and all aspects of intellectual property protection in Turkey. Reach out to our Istanbul office to discuss how we can protect your innovation rights and business interests.
