Ever since a patent is entered into national phase before the Turkish Patent Institute (“TPI”), it becomes a national patent subject to the rules of the Decree Law Pertaining to the Protection of Patent Rights (“Law”).
In respect to patent applications filed via EPC the authority of TPI on examining and deciding on the patentability of the application has been passed to European Patent Office (“EPO”), therefore the TPI acts as an validating body only.
In respect to the patent applications filed directly before TPI or entered into national phase via Patent Cooperation Treaty (“PCT”), TPI conducts an examination on the patentability and applies Article 62 of the Decree Law.
The wording of the Article 62 mentions about first, second and third examination phases and rules that the TPI should give the right to the applicant after notifying each examination report to submit his observations with a view to removing the unfavorable opinions and, if he deems necessary, amend the claims.
TPI interprets the wording of Article 62 as if the article limits the number of examinations, to be conducted during the patent examination phase, with three times.
According to TPI, after the third examination report, which is final and binding, no further examination can be demanded or conducted. However TPI’s practice is notifying the outcome of third examination report to the applicant together with its final decision on the application in the light of the outcome of the third examination report. This debars the legal right of the applicant to submit his observations on the third examination report with a view to remove the unfavorable opinions and amend the claims. Moreover, the interpretation of TPI on limiting the number of examinations with three times is certainly not compatible with the objective of the Law. In fact the aim of the Law is not preventing the applicant from acquiring a patent right but conducting the patent grant process in a most fair and appropriate way which will give the protection to the applicant it seeks as much as it deserves.
Özge Atilgan Karakulak
Selin Sinem Yalincakli