In Türkiye, jurisdiction and venue for invalidation lawsuits concerning patents and utility models are determined by the residence of the patent owner. If the patentee resides abroad, venue is determined by the domicile of the registered patent attorney. Under the Industrial Property Code No. 6769 (IP Code), the grounds for invalidation are as follows:

Grounds for Invalidation

1. Lack of Patentability Requirements

• Lack of novelty
• Lack of inventive step
• Ineligibility for industrial application
• Inventions based directly on software or business methods lacking technical content (excluding inventions possessing technical character and defined by a concrete system or method)
• Surgical, therapeutic, or diagnostic methods applied to the human or animal body
• Plant or animal varieties (including essential biological processes)
• Non-technical elements offering no technical contribution (discoveries, scientific theories, mathematical methods, rules for playing games, aesthetic creations, presentations of information, inventions contrary to public order, etc.)

2. Insufficiency of Disclosure

Failure to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (including instances containing non-working claims or embodiments).

3. Extension of Subject-Matter

Amendments made during prosecution or post-grant that extend beyond the content of the initial application (Art. 138/1-c, IP Code).

4. Unlawful Entitlement

Usurpation of title or lack of authority on the part of the patent holder.

Key Procedural & Substantive Aspects

Burden of Proof

The burden of proof rests on the party asserting invalidity pursuant to Article 190 of the Code of Civil Procedure (HMK). Official patent documents and scientific publications are accepted as highly reliable evidence. While court practices regarding “prior use” claims vary—witness testimony being rarely relied upon and product catalogs scrutinized for date authenticity—such evidence may still be evaluated depending on the case.

Disclosures by the Patent Holder

Disclosures made by the inventor or their successor in title within the 12-month grace period preceding the filing date (or priority date) do not prejudice novelty. This applies equally to authorized or unauthorized disclosures made by third parties who derived information from the applicant.

Earlier Filed, Later Published Patent Documents

Under Article 98 of the IP Code, prior national applications, European patent applications, and PCT applications entering the national phase—filed before the subject application’s filing date but published after—constitute prior art solely for novelty purposes. They are not considered when assessing inventive step.

Expert Panels in Invalidation Lawsuits

Turkish IP courts frequently appoint expert panels to resolve technical issues. It is critical that the panel includes at least one patent attorney with a technical background who can accurately interpret the specification and claims against the prior art.

Joinder of Actions (Invalidation and Infringement)

Under Article 166 of the HMK, interconnected invalidation and infringement lawsuits may be consolidated. A patentee may file an infringement suit after an invalidation action has been launched, or conversely, an alleged infringer may file a counterclaim for invalidation. Non-infringement declaratory actions may similarly be consolidated with invalidation suits.

Invalidation Actions Against Utility Models

Utility models are not subject to the “inventive step” requirement (Art. 144/1-a, IP Code); thus, lack of inventive step is not a valid ground for invalidation. However, utility models claiming processes, chemical substances, or products obtained through such processes are subject to invalidation. Because novelty is the central criterion, even a minor difference over the prior art can preserve the validity of a utility model.

Claim Amendments During Litigation

Turkish legislation does not explicitly provide a mechanism for post-grant claim limitation during litigation. However, a patentee may surrender specific claims (Art. 140/3, IP Code). While local courts generally reject claim amendments during trial, it is common practice for courts to consider limitation proceedings before the European Patent Office (Art. 105a EPC) or amendments made during EPO opposition/revocation proceedings (Art. 138/3 EPC).

Partial Invalidation

The court may invalidate a patent in part, restricted to specific claims. In such cases, the patent remains valid for the surviving claims. Courts must independently evaluate the patentability of each claim during trial.

Oppositions & Invalidation Before the European Patent Office (EPO)

European patents may be opposed before the EPO within 9 months from the publication of the grant mention (Art. 99 EPC). EPO opposition decisions are binding across all designated contracting states.

Primary Grounds for EPO Opposition

• Art. 100(a) EPC: Unpatentability of the subject-matter (Arts. 52–57 EPC).
• Art. 100(b) EPC: Insufficiency of disclosure.
• Art. 100(c) EPC: Extension of subject-matter beyond the application as filed.

Stay of Proceedings in Parallel Oppositions

In accordance with procedural economy, Turkish courts may stay local invalidation proceedings pending the outcome of parallel EPO opposition proceedings. However, if the EPO process is anticipated to take an extended period, local courts may exercise discretion to proceed and render a decision independently.

EPO Appeals Procedure

Decisions rendered by EPO Opposition Divisions can be appealed to the Boards of Appeal (Art. 106 EPC). The Board of Appeal may revoke the patent completely, maintain it in amended or original form, or remit the case to the Opposition Division for re-examination.

Appeals to Turkish Regional & Supreme Courts

First-instance court decisions in Türkiye are subject to appeal before the Regional Courts of Appeal (İstinaf) and subsequently the Court of Cassation (Yargıtay). As appellate judges possess legal rather than technical training, judicial review relies heavily on the technical findings established in lower court expert reports.

Acts Constituting Patent Infringement

Under the Industrial Property Code No. 6769 (IP Code), the following acts constitute patent infringement:

• Unauthorized Commercialization: Producing, selling, offering for sale, importing, or putting on the market all or part of a patented invention without consent.
• Process Patents: Selling or using products obtained directly through a patented process.
• Contractual Violations: Exceeding the scope of a license agreement or transferring rights without authorization.
• Inducement & Contributory Infringement: Participating in, encouraging, or aiding infringing activities.
• Refusal of Disclosure: Refusing to disclose the source or distribution channels of infringing products.

Legal Remedies Available to Rights Holders

• Cessation and prevention of infringing activities.
• Claims for material and moral damages.
• Seizure and transfer of ownership of infringing goods as well as equipment used in their manufacture.
• Injunctions to prevent ongoing or imminent infringement.
• Official publication of the court decision.

Methods for Calculating Loss of Profit

A patent owner may claim material damages based on lost profits resulting from the infringement. Under the IP Code, lost profits are calculated using one of three methods:

1. Owner’s Lost Income: Potential revenue the patent owner would have generated absent the infringement.
2. Infringer’s Profits: Net profits realized by the infringer through the unauthorized use of the patent.
3. Reasonable Royalty: The hypothetical license fee the infringer would have paid had they legally licensed the patent.

Jurisdiction & Venue

In infringement lawsuits, jurisdiction lies with the court of the place where:

• The plaintiff resides,
• The infringing act was committed, or
• The effects of the infringement materialized.

If the plaintiff is domiciled outside Türkiye, venue is determined by the business address of their registered patent attorney. If the attorney’s registration has been revoked, jurisdiction defaults to the courts of Ankara (location of TÜRKPATENT headquarters). Specialized IP Courts (Fikri ve Sınai Haklar Mahkemeleri – FSHM) are located in Istanbul, Ankara, and Izmir.

Expert Reports & Consolidation of Actions

Given the technical nature of patent litigation, courts routinely appoint expert panels. It is essential that the panel includes at least one patent attorney with a technical background who can accurately interpret the specification and claims against the prior art.

Pursuant to Article 166 of the Code of Civil Procedure (HMK), connected proceedings, such as an infringement suit running parallel to an invalidation action or a non infringement action, may be consolidated.

Non Infringement Declaratory Actions (Negative Declarations)

A non infringement declaratory action is a strategic legal remedy frequently utilized by generic pharmaceutical companies during market authorization processes to ensure a safe, timely market entry. While potential plaintiffs may notify the patent owner and request a formal opinion before filing suit, courts do not treat such prior notice as a mandatory procedural prerequisite.

Doctrine of Equivalents & Prosecution History Estoppel

The scope of protection conferred by a patent is determined by its claims. However, protection extends beyond the literal wording of the claims. When evaluating equivalence, courts generally apply the “function way result” test.

Furthermore, statements made by the applicant during prosecution are taken into account to define the boundaries of protection (Prosecution History Estoppel / prohibition of contradictory legal conduct).

Bolar Exemption

Under the IP Code, activities necessary for the regulatory approval of pharmaceuticals, including tests, trials, and administrative filings, are excluded from patent coverage (Bolar Exemption). Submitting a marketing authorization application to the Ministry of Health does not constitute infringement. However, listing a generic product on the Social Security Institution (SGK) positive/pricing list may be deemed an actionable step initiating infringement.

Supplementary Protection Certificates (SPC)

Current Turkish IP legislation does not provide mechanisms for extending patent terms, such as Supplementary Protection Certificates (SPC) or Patent Term Adjustments (PTA).