(1) APPLICABLE LAWS

    1. The Industrial Property Code No. 6769 (the IP Code), which was prepared by the Turkish Patent and Trademark Office (the Office), is the main legislation in Turkey codifying all kinds of IP rights in Turkey. The IP Code which has abolished previous IP related Decree-Laws entered into force on 10 January 2017 upon publication in the Official Gazette.

    2. The IP Code regulates all IP rights in a single code. It is divided into five chapters, and the first four chapters of the law relate to trademarks, geographical indications, designs and patent rights, respectively. The principles, rules and conditions regarding the protection of patents are stated in Book 4 of the IP Code.

    3. Even though the Law abolished the IP related Decree-Laws, according to provisional Article 1 of the IP Code, provisions of the Decree-Laws will be implemented for applications filed before the enforcement date of the Code until their registration processes complete.

    4. Indeed, the IP Code was prepared to achieve harmony with recent developments in European Union (EU) IP law, to restore the gaps due to the decisions of the Constitutional Court annulling various provisions of the Decree-Laws and to make the relevant regulations clearer, more understandable and more systematic, as stated in its preamble.

    5. The IP Code also refers to the provisions of the Code of Civil Procedure numbered 6100 (CCP) which is the main legislation regulating the procedural rules for civil actions; thus, CCP also applies in IP matters.

    6. Turkey, as a member of Customs Union, has acceded to almost all international treaties relating to the field of IP. Of these treaties, the Strasbourg Agreement, the Budapest Treaty, the Paris Convention, the Patent Cooperation Treaty, the European Patent Convention, and the World Trade Organization (WTO) and Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement are the most well-known.

    7. In the event of a conflict between international agreements on fundamental rights and freedoms that have properly been ratified and other domestic regulation, Article 90 of the Constitution provides for the prevalence of the provisions of the international agreement.

(2) ENTITLEMENT

(2.1) COMPENSATION

    8. Articles 113 et seq.  of the IP Code govern employee inventions and foresee compensation for inventors who are employees.

     9. If an employee makes an invention in the course of his duties for an enterprise or public administration, or an invention that is based to a large extent on the work and experience of the enterprise or public administration, or makes an invention in the course of an ongoing work relationship, this invention is acknowledged to be a service invention. In either case, the invention must have been completed in the course of the employment relationship to be categorized as a service invention.

    10. According to the IP Code, the inventor employee is obliged to notify the invention made to the employer in writing without any delay. Upon service of this notification to his side, the employer should notify the employee whether he claims full or partial right on the service invention, in writing within four months as of the date the employee's notification reaches him.

     11. If the employer claims full rights to the invention, the inventor may claim a reasonable payment from the employer. On the other hand, if the employer claims partial rights to the invention and uses it, the inventor will have the right to claim a reasonable payment from the employer. The calculation of such payment is based on how well the invention can be commercialized, the position of the inventor in the enterprise and the contribution of the enterprise to the invention.

     12. The Regulation on Employee Inventions, Inventions Realised within Higher Education Institutions and Inventions Arisen from Projects Supported by Public Authorities entered into force on 29 September 2017.

    13. It should be highlighted that the new regulation establishes rules foreseeing that any dispute that falls under the scope of the regulation must be solved via arbitration; however, the particulars of such arbitration dealing with employee invention is not regulated until today. Having said that, it is legally impossible to introduce compulsory arbitration via regulations. Section 8 of the new regulation and many other provisions that will be affected by it are subject to cancellation actions before the Council of State on the grounds that the regulation exceeds the authority permitted by law and violates the Constitution. These actions are still pending before the Council of State.

     14. It is important to note that, after claiming rights on the service invention, the employer cannot free himself from paying the claimed amount by arguing that the invention is not worth protecting unless a court decides that the patent is not worth protecting. The IP Code foresees that the amount and method of the payment will be determined in accordance with the contract or other legal agreement between the employer and employee if there is any.

    15. In Turkey, there is no significant precedent regarding employee inventions and relevant payments; most of the disputes between the employee and employers are resolved amicably.

(2.2) DERIVATION

    16. Article 109 of the IP Code foresees that the person submitting the initial application for a patent has the rights in relation to the patent unless the contrary is proven. That is to say, the IP Code contemplates a 'first to file' as opposed to a 'first to invent' system. Inventors or their successors are entitled to allege derivation of the patent entitlement

    17. The allegation that an applicant is not entitled to claim patent rights on the invention may be brought before the competent IP courts, and the Office must be notified of the action. If the court accepts the action filed by the third party claiming to have entitlement and accepts his entitlement on the patent, then, remedies available against the abusive patent applicant will differ depending on whether the patent is registered or pending before the Office.

    18. If the abusive patent application is still ongoing at the time of the Court decision, then, the court-approved right owner will have three rights of choice. He may (i) request the Office to register and process the patent application in his name, (ii) submit a new patent application for the same invention making use of the same priority right or (iii) request the Office to reject the application, by applying to the Office.

    19. In case the court-approved right owner wants to submit a new patent application for the same invention making use of the same priority right, this application will be processed as of the date of the initial abusive application, and the said application will be considered invalid. The court-approved right holder should apply to the Office within three months as of the finalization of the Court decision about the true right holder. A Court decision will be accepted as final if no appeal is filed in due time, or, when the Court of Appeal renders a final decision on the appeal(s) filed. If no application is made to the Office, within three months, the disputed application will then be considered as withdrawn.

    20. As per Article 111 of the IP Code, if the abusive patent application is finalized and the patent is registered in the name of the deriver, then the right holder can request the re-assignation of the patent to himself. In principle, the entitled person should file the action on the derived patent within two years of the publication of the patent as registered; however, this limitation does not apply for malicious patent registrations.

    21. As detailed under section 2.1 Compensation, if an employee makes an invention that would be accepted as a service invention and the employee claims ownership on the invention by following the route set out in the IP Code, the patent owner would be legally registered as the employer and the employee should be compensated reasonably.

However, in case the employer does not claim rights on the invention within legal terms once it is noti?ed of the invention, then the invention will be accepted as a free invention. After this point, the employer cannot ?le a patent application for that

invention and the employee can start entitlement proceedings against the employer (see

Smart Chart: Compensation).

(2.3) APPLICANT

    22. According to Article 109 of the IP Code, the rights to a patent will belong to the inventor or his successor in title and will be transferable. Where an invention has been made jointly by more than one person, unless foreseen otherwise by the parties, the right to request a patent will belong to them jointly. Where an invention has been made independently by several persons at the same time, the right to a patent will belong to the person who files the first application or who can claim an earlier priority right.

    23. The person who is the first to apply for a patent will be vested with the right to request the patent until proof to the contrary is established. As per Article 138 of the IP Code, the filing of the patent application by a non-entitled person may result in the invalidity of the patent.

(2.4) EMPLOYEE

     24. As per Article 2 of the Labor Code No. 4857, an employee is defined as a person working based on an employment contract. According to the IP Code, employee inventions may be classified as service inventions or free inventions.

    25. Service inventions are inventions that are made by the employees during the term of their employment, in either a private enterprise or public authority, while performing, as of their obligation, the tasks they have been assigned to or which are based to a great extent on the experience and work or activity of the private enterprise or public authority. An employee that has made a service invention will be under the obligation to report, without delay, the invention to his employer in writing.

    26. An employer may claim rights, in part or in whole, to a service invention. The employer should notify the employee of such a claim in writing and must make his claim within four months from the date of receipt of the employee's report by the employer. Where the employer claims rights of ownership on the service invention, the employee will have the right to a reasonable fee. For further information, see Smart Chart: Compensation.

    27. Employee inventions not falling under the scope of service inventions will be deemed to be free inventions. An employee who has made a free invention during the term of an employment contract must notify the employer without delay. Where the invention falls within the field of activity of the employer's enterprise or where the employer's enterprise was in serious attempts to become active in the field of the invention, the employee will be under the obligation to make an offer to the employer, on a non-exclusive basis, to benefit from the invention on reasonable terms.

    28. The above-described rules regarding the employee inventions apply to the inventions made by employees of universities and public administrations having a task of research or to inventions that are the outcome of projects supported by public institutions and organizations unless they contradict with the special provisions foreseen in the Article 121 and Article 122 of the IP Code. For further information, see  Smart Chart: Education/ Research.

(2.5) EDUCATION/RESEARCH

    29. The IP Code foresees great amendments on the provisions regarding the inventions made by employees of universities as a result of their scientific work and researches of the abolished Patent Decree-Law.

    30. Article 41 of the abolished Patent Decree-Law, was foreseeing that the inventions made by the university employees as a result of their scientific work and research, were free inventions. That is to say, the university employees were the owner of all of the material and moral rights on the invention. However, with the new IP Code, the system which is similar to the employee invention system is adopted. See  Smart Chart: Compensation and Smart Chart: Employee.

    31. According to Article 121 of the IP Code, university employees are obliged to immediately report the invention and the patent application, if any, in writing to the university. If the university claims rights on the invention, it is obliged to file a patent application for the inventions made by the university employees. Failing to file such application will convert the employee's invention to a free invention. The income from the invention is shared among the institution of higher education and the inventor, with the inventor receiving at least one-third.

    32. According to Article 121 of the IP Code, with respect to inventions made by members of the academic staff, by internees or students as a result of contract-based work at other public institutions or for private organizations, the rights ownership is defined on the basis of the contract provisions, with the provisions of other laws reserved. The provisions regarding employees, which are not university staff, also apply to the inventions of students and internees who work without pay and without a defined time limit, working in the workplace of the Employee.

(2.6) TEAMWORK

    33. According to Article 109 of the IP Code, if the invention is the work of more than one person, each of them has rights with respect to a patent for such invention, unless otherwise agreed by the parties. If a patent application or a patent is owned by more than one person without being divided, the co-ownership is governed by the agreement between the parties, if no such agreement exists, by the provisions of Turkish Civil Code on shared ownership.

    34. According to Article 112 of the IP Code, every right holder is entitled to (i) freely dispose of his share, (ii) use the invention upon notification to the other co-owners, (iii) take necessary measures to protect the patent application or the patent and (iv) initiate legal proceedings against third parties suspected to violate any rights granted with the patent application or the patent. However, in filing such an action, the plaintiff is obliged to inform the other right holders of the action within one month from the date of filing of the action.

(2.7) ENTITLEMENT CLAIMS

     35. In relation to disputes on ownership of the invention, Article 110 of IP Code reads:

      (1) Allegations that an application owner has no patent claim right cannot be made to the Institute. Until the contrary is proven, the application owner is considered to have a claim to the patent right.

      (2) Persons who, during patent application procedures, in accordance with the provision of Art. 109, paragraph 1, claim to be the true patent owners have to file a lawsuit against the application owner and notify the Office about it. The court may decide to suspend the patent granting procedures until the court's ruling has become binding.

      (3)If the plaintiff wins the rights ownership case, the court-approved rights holder must, within three months of the ruling becoming binding, proceed as follows with respect to the still valid application:

        (a) request the Office to register and process the patent application in his/her name.

        (b) submit a new patent application for the same invention making use of the same priority right, if applicable.

        (c) request the Office to reject the application.

      (4) Applications under paragraph 3b are processed as of the date of the initial application. In this case, the initial application is considered invalid.

      (5) If the plaintiff and true rights owner fails to apply to the Office within three months of the court ruling becoming binding, the disputed application is considered withdrawn.

      (6) Persons who claim a partial right in the patent as co-inventors have the right to take the matter to court in accordance with paragraph 2.

      (7) The provisions of paragraph 3 also apply to divided applications in accordance with Art. 91.

      (8) Patent applications that are taken to court in accordance with paragraph 2 cannot be withdrawn without the approval of the plaintiff before the ruling becomes binding.

      (9) If a patent is granted while court proceedings are ongoing, the case of unlawful application appropriation becomes a case of unlawful patent appropriation.

    36.  On the other hand, as per Article 111  of the IP  Code, if a patent has been granted to a person other than the rightful owner, the person who alleges to be the legitimate proprietor of such right may file an action claiming the transfer of ownership of the patent without prejudice to his/her other rights and claims conferred by the patent. Where only partial rights to the patent are claimed, a court action may be filed claiming joint ownership of the patent.

    37. The right to raise such a claim and file such a court action as described above shall be exercised within two years following the date of publication of the patent or, in cases of bad faith, until the expiry of the term of protection of the patent. At the request of the interested party, the court action and the claims put forward therein, the final ruling or any other action concluding the court action shall be registered in the Patent Register in order to have an effect against third parties.

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