Law No. 6769 on the Protection of Industrial Property Rights (the “Industrial Property Law“), ratified on December 22, 2016 and entered into force by publication in the Official Gazette on January 10, 2017, repeals Decree No. 551 on the Protection of Patents (the “Patent Decree”) and introduces certain amendments to the provisions on compulsory licenses.
A compulsory license restricts the patent rights of the patent holder and is a right recognized based on the fulfilment of certain conditions of the Industrial Property Law. A compulsory license is granted when the patent is not being used; the subject matter of a patent depends on the subject matter of a previous patent; or when compelled by public interest or national security requirements.
The new Industrial Property Law brings significant amendments to compulsory licensing in Turkey and repeals certain provisions on procedural matters, such as the statement of costs in compulsory licensing decisions and the suspension of the compulsory licensing process.
Certain provisions of the Patent Decree, however, remain under the Industrial Property Law, such as the prohibition of sub-licensing by the compulsory licensee, the non-exclusivity of the compulsory licenses and the conditions triggering compulsory license termination.
The Industrial Property Law introduces new cases where a compulsory license may be granted:
- The export of pharmaceutical products to foreign countries experiencing public health problems.
- A plant breeder cannot develop a new type of plant without infringing on a previous patent.
- The patent holder engages in activities that prevent, distort or restrict competition while using the patent.
- The use of the patent is not sufficient to meet the national market requirements.
The Industrial Property Law no longer provides the right to request a compulsory license from the court if the patent involves a procedure to obtain a patented chemical or a pharmaceutical substance, and if said patent provides a significant technical advancement compared to the previous patent.
With the new Industrial Property Law, the Turkish Patent Institute name was changed to the “Turkish Patent and Trademark Office.” The Industrial Property Law no longer includes provisions governing the duties and authorities of the Turkish Patent and Trademark Office on its mediation practices for compulsory licenses.
While the Industrial Property Law contains less detailed provisions than the Patent Decree on the procedure for granting compulsory licenses, it presents significant changes to compulsory licensing in Turkey. Companies should carefully review and take note of the amendments introduced by the new Industrial Property Law on compulsory licensing.