20th September, 2019
FICPI - TURKEY arranged its sixth roundtable meeting on opposition proceedings of European Patents before the European Patent Office (“EPO”), the protection of the amended version of already validated patents in Turkey following the opposition procedure and how the opposition procedures of the Turkish Patent and Trademark Office (“Office”) should be as per the new law.
Mr. Barış Atalay, who is a European and Turkish Patent Attorney and member of FICPI – TURKEY, moderated the meeting. 24 participants were present at the meeting including some FICPI-TURKEY members.
Following the opening speech made by Ms. Ayşen Kunt, the Secretary General of FICPI - TURKEY, Mr. Atalay firstly gave information regarding the admissibility in the European opposition proceedings by referring to the Guidelines of the EPO for examination and mentioned the possibility that any of the opposition grounds can be rejected since every single opposition ground is taken into consideration separately.
Afterwards, Barış Atalay by addressing the content of the oppositions stated that when an opposition is filed, facts, evidence and arguments are submitted and all of these make up the reasoned statement; however in the Turkish procedure there is a need for a guide on how these statements should be.
Barış Atalay referred to the subject of intervening to an opposition and that the defendant of an infringement action or a party who received a warning letter and filed a negative declaratory action can be an intervening party like a real opponent to an opposition within 3 months even if the 9 month opposition duration expires. However the intervening parties cannot have the status of an opponent and cannot proceed with the file as a party if the real opponent withdraws his opposition.
He noted that regarding the public prior use, while there is little information in the Turkish law and the opposition proceeding in Turkish law, detailed information is available under the European procedure.
Thereafter, Barış Atalay gave information about how the oppositions are examined in case of multiple opponents. He stated that although all notices of opposition will be considered as new in terms of procedure and examined separately, all the grounds, evidence and arguments of the opponents are gathered in a pool and the opponents can use each other’s grounds in the pool system of the European legislation.
Regarding the late-filed requests, Barış Atalay mentioned that the Opposition Division would consider a late-filed prior art document only if it endangers the maintainance of the patent, and it is unlikely to introduce late-filed grounds before the Opposition Division. He also stated that the patent owner should not present late-filed amendments in the same way and surprise the opponent, that the rules for submitting late documents and requests during the opposition process will be applied to the patent owner, too.
Later on, regarding the clarity objection Barış Atalay stated that clarity is not a ground for opposition, both before the EPO and in Turkish law; however it is a subject open to be abused and that clarity is taken into consideration only with regards to amended claims. However, he stated that the patent owners may tend to amend their claims by correcting potential clarity problems in non-amended text as granted while filing amendments against the counter evidence filed during the opposition before the EPO and the Turkish Court. He emphasized that while the patent owners are entitled to do so, attention should be paid to the grey areas.
Lastly, the participants have made evaluations regarding the opposition procedures both before the EPO and the Turkish Office and discussed that the Turkish Office should organise a workshop with the relevant civil society organizations and practitioners regarding the opposition procedure. It was also discussed that drafting of the guideline would benefit both the consistency of implementation and the conduction of a healthy opposition procedure, which would reduce the burden of the courts.
Most participants actively took part with their questions and discussions both during the meeting and the closing cocktail. FICPI – TURKEY will continue providing these discussion platforms for the practitioners by the traditional Roundtable meetings and seminars.