FICPI Turkey shed light on Turkish Patent and Trademark Office's post-grant opposition processes with the training that was held on April 6, 2022.

Burcu Sucuka, Secretary General of FICPI Türkiye, moderated the webinar and European Patent Attorney Barış Atalay joined as a speaker. During the training, both current Turkish legislation and European legislation as well as the practice at European Patent Office (EPO) were discussed and possibilities that may be encountered in the future were outlined.

The training webinar started with Ms. Burcu Sucuka's opening speech as moderator. During the opening remarks, Ms. Sucuka mentioned that the post-grant opposition system, which is new in the Turkish Patent and Trademark Office, is not yet widely known and that many patent attorneys have several questions for which they are eagerly waiting for the answer, for example: whether more than one set of opposition can be submitted together, what happens when the change proposal suggested by the institution is not accepted by the patent holder, and whether it is possible to submit a post-grant opposition without disclosing the opposing party.

The webinar continued with Mr. Barış Atalay's presentation on post-grant opposition processes at the Turkish Patent and Trademark Office. Mr. Atalay centred his presentation around 7 main topics: admissibility in terms of procedure, multiple opposing parties, previous public use, powers of attorney, accompanying persons, delayed claims, and clarity objections. Barış Atalay also stated that the questions which remain unanswered regarding the implementation of the post-grant opposition procedures in Turkey will be shaped over time by the influence of the guidelines set forth at European Patent Office (EPO). It was mentioned that, for now, the only resources related to post-grant opposition procedures were Turkish Industrial Property Code (IP Code), Regulation on the Implementation of the IPA, European Patent Convention (EPC) and EPO jurisprudence.

In the remainder of the presentation, it was emphasised that procedural admissibility differs from admissibility of the opposition. As a matter of fact, admissibility in terms of procedure is only one of the conditions for an opposition to be admissible. For procedural admissibility, an opposition must be filed within the opposition period, the opposition fee must be paid, the filing must contain the necessary information about the opposing party and the relevant patent, and it must also contain at least one of the grounds for opposition listed in the relevant law. At the same time, the grounds for opposition must be supported by facts, evidence, and arguments.

It is explained that the opposition period under EPC is nine months. Under IP Code, this period is 6 months. These periods are both final and requesting an extension is only possible under very limited circumstances. Mr. Atalay reminded the attendees that the grounds for opposition are laid out in EPC article 100 and under IP Code in articles 67-69 and 99. It was also highlighted that it was crucial to establish the connection between the opposition grounds and the facts, evidence, and arguments. Facts, evidence, and arguments that are not properly correlated will be deemed not presented.

While reflecting on the case of multiple opposing parties, Mr. Atalay stated that this issue has not yet been regulated in Turkish legislation. However, in EPC the opposition by multiple parties was regulated and tied to two conditions. Accordingly, a person who is the subject of an infringement lawsuit or who has filed a negative clearance action as a result of a notification letter can also participate in the ongoing opposition process at the EPO within three months following the fulfillment of the relevant condition. Briefly referring to the concept of the accompanying person, Mr. Atalay stated that the role of these persons, who stood by the patent attorneys at the EPO hearings, could not be implemented in the Turkish system since hearings are not allowed under Turkish Patent and Trademark procedures.

Regarding the opposition on public prior use, it was pointed out that this issue was also an area that has not yet been regulated in Turkish legislation. Public prior use is a matter regulated in the EPC and shaped by the jurisprudence at the EPO. Public prior use generally takes place in an event such as a public seminar, promotional meeting, presentation, marketing activities or any other similar occasion related to the sale and exchange of a product. Mr. Atalay emphasised that the public prior use must be an event available to the public and must be realised before the filing of the European patent application. Both of these conditions must be proven by the opposing party with relevant evidence such as flyers or event posters and by specifying the exact date.

Mr. Atalay then moved on with the issue of power of attorney. According to Turkish legislation, there is no obligation to delegate an attorney for Turkish Patent and Trademark Office procedures. The EPC, however, regulates three groups of attorneys: party employees, legal practitioners, and European patent attorneys (professional representatives). As discussed during the training, although the party employees and the legal practitioners are obliged to present a power of attorney for the post-grant opposition procedure, no such obligation is imposed on the European Patent attorneys. A European patent attorney must present a power of attorney only in case of a change of attorneys in the file.

Regarding delayed requests, another topic mentioned during the training, it was discussed that even though this issue is not regulated in the IP Code, the guidelines and practices in the EPC are expected to be implemented in Turkey in accordance with the public interest.

In principle, any fact and evidence that is not included in the opposition petition and is put forward later is accepted as delayed. However, as explained by Mr. Atalay, the same cannot be said for arguments. A new argument can be put forward after the opposition has been filed.

It was highlighted that due to the public interest, as a rule, delayed claims cannot be taken into account. However, if a delayed claim is so significant that it threatens the existence of the patent, the EPO can consider the delayed claim during the opposition. It was emphasised that due to its nature, the delayed claim must be a claim that could not have been asserted earlier. It is also critical to explain and justify the reason why the claim was delayed.

Mr. Atalay drew attention to another important point: the documents included in the opposition petition but whose relevance and connection to the opposition were not sufficiently explained cannot be considered as part of the opposition. Documents that the patent owner refers to in the text of the specification are not considered as a direct part of the opposition unless they are presented as the closest prior art. In this case, an opposing party cannot claim that the patent owner also referred to such document or that the document is a part of the opposition.

Mr. Atalay also explained the balance of interests at the EPO. Accordingly, when the EPO provides for an opportunity in favour of one of the parties, they also provide the other party with the same convenience. Therefore, in response to a delayed claim, the patent owner is given the right and the time to respond to this delayed claim.

Mr. Atalay touched upon the clarity objections as the last subject of the training. It was stated that, as a rule, the clarity objection is not a ground for opposition. Clarity is a form of objection that can only be raised when the patent owner begins to amend their claim following the opposition and that part of the amended claims goes beyond the simple combination of the present claims. Mr. Atalay further explained that if the amended part does not go beyond the simple combination of the present claims, the clarity objection will still not be considered. Finally, it was mentioned that the clarity objection is an area that has not yet been regulated in Turkish law.

At the end, Mr. Atalay emphasised once more that although the post-grant opposition procedure under Turkish law is still very new, it will be shaped over time by practice and in line with EPO jurisprudence and guidelines. Mr. Atalay also shared particular examples and exercises from EPO practice and responded to the questions from the attendees. The training was very helpful for patent attorneys and allowed them to get the answer to many of the questions they have had regarding this new procedure.

FICPI Türkiye will continue educational webinars to support Turkish practitioners and to contribute development of patent prosecution in Türkiye

  • The interest and participation of patent attorneys to FICPI Türkiye webinars is an indication how it is important to share knowledge and expertise on developing areas such as post-grant opposition procedure. Upon persistent requests of the participants the video record of the webinar is also shared on the website of FICPI Türkiye: https://ficpi.org.tr FICPI Türkiye will continue to observe educational needs of patent attorneys in Turkey and to contribute to their professional development.  
  • Find FICPI members in Türkiye using the FICPI member directory: https://ficpi.org/user-advanced-search

 

 

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