Since Turkey’s inclusion as a member of the EPC, a hot topic has been the enforcement or invalidity of Turkish validation of European Patent(s) (“EP”) while proceedings before the European Patent Office (the “EPO”) are pending.
Once an EP is validated in Turkey, it becomes a national patent three months after its first granted decision by the Examination Board of the EPO. For EPs, the Turkish Patent and Trademark Office (the “TPMO”) acts only as a procedural agency. Thus, the TPMO does not examine the EPs at any level, nor it does it hear any post-granted oppositions. On the other hand, two provisions of the Law contradict the EPC. The first is that a patent may be subject to invalidity proceedings before Turkish IP Courts after the decision has been granted. While the Courts cannot decide on an invalidation action until the national opposition proceedings conclude, there is no such immunity for EPs. The second is that no amendment to the claim is allowed following the decision. EPs validated in Turkey are directly exposed to invalidation actions, in spite of the fact that they may be amended during EPO opposition proceedings, which will be automatically reflected upon the Turkish validation.
To avoid any Turkish Court decision as to validity, EP owners are advised to request the Court to await the outcome of the EPO opposition proceedings. If this is not accepted by the Court due to the length of the EPO proceedings, it is worth asking the Court to apply Article 138/3 of the EPC.
Article 138/3 of the EPC is binding upon the national Court to allow EP holders to limit the patent by amendment, and that the patent, as thusly limited, will form the basis for the invalidation proceedings. Although the amendment procedure in Article 138/3 is still not straightforward for the IP Courts and the TPMO, the IP Courts are increasingly inclined to examine such requests and instruct the TPMO to decide as to the limitation.