Use or non-use matter for patents in Turkey

The period for using or working a patented invention is typically three years as from the publication of the patent grant in the Turkish Patent Bulletin or four years as from the application date of the patent, whichever is the later. This period is especially important in respect of the compulsory requests, as it is not possible for third parties to request compulsory license before the expiration of this statuary period.

The due date for use is actually relative since the actual due date for use is calculated considering the date of request for a compulsory license. In other words, the use can be performed any time during the lifetime of the patent but should be performed before the request for compulsory licence for avoiding any risk of compulsory license if three years period have already passed. For instance, if the use has been performed at a time after 3 years as from the publication of the patent grant in the Turkish Patent Bulletin but before the date when the request for compulsory license is filed, the use requirement has been deemed to performed.

In the case of European patents validated in Turkey, the initial 3-years period for the use requirement is calculated based on the publication date of the European patent in the Turkish Patent Bulletin (not the publication date in the European Patent Bulletin). After that period, any third party will be allowed to request compulsory license based on possible non-use.

Whereas the actual use is as defined above, non-use or use declarations, as prescribed by the Implement Regulation (Rule 117 (7)) but not the Law, should be filed within three years as from publication of the decision to grant patent in the Turkish Patent Bulletin or four years as from patent application date, whichever is the later. The use and non-use declarations filed for the patents are published in the Turkish Official Patent Bulletin. The patents in respect of which no use is declared are also published in the Turkish Official Patent Bulletin.

The Implementing Regulation, in general terms, specifies that the market conditions and circumstances beyond the control and will of the patentee is considered in assessing the use. Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are to be deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons in the nature of constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the patentee.

The Regulation does not prescribe any positive or negative effect on patent rights if use or non-use declaration is not filed within the prescribed due dates. This point is not sufficiently clear but it can be said that the main purpose for requiring to file non-use or use declarations is:

• to keep the third parties informed of the fact whether the patent is being used or not, on what grounds the use has been or has not been performed, or the legitimate reasons for non-use as generally defined in the Regulation, and
• to encourage the patent holders to use their inventions or to grant licenses if they do not use their patented inventions directly in Turkey.

As for the nature of the declarations, a standard form (P-34) in the nature of declaration is provided by the Turkish Patent and Trademark Office. The form, to be signed by patent attorney on behalf of the patentee, contains the following statements, one of which is selected:

• Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is used.

• Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is not used.

Although the form provides standard statements, an additional declaration can be submitted along with the form for reasoning non-use or clarifying use. Furthermore, evidences of use in the case of use, and any documents reasoning the non-use in the case of non-use can be attached to the declaration.

The declaration of non-use can cover a legitimate reason as identified above (e.g. procedures of marketing authorization ongoing). On the other hand, the declaration of use can cover a statement how the patented invention is being used in Turkey, e.g. by being imported to Turkey, or being produced in company or facility X located in Turkey etc., which may be useful to discourage third parties who would attempt to request compulsory license.

Alternatively, it is possible to file offer for license to prevent third parties from requesting the compulsory license if the subject invention is not used or will not be put into use by the patent owner. Offer for license can be always withdrawn.