Thoughts on Turkish patent institute patent examination procedure: Part II – The procedure contradicts with EPC and PCT

In our previous post (Part I – Turkish Patent Institute Limits the Number of Examinations) we wrote about Turkish Patent Institute’s (“TPI”) practice to limit the number of examination of patent applications and criticized that this approach does not comply with the aim of the Law, which is to conduct its practices in a most fair and appropriate way to give the protection to the applicant it seeks as much as it deserves.

Article 4 of the Law explicitly rules that where international treaties in force in Turkey contain provisions which are more favorable to those of the Law, the relevant person may request to benefit from more favorable provisions of international treaties. Accordingly, as Turkey is a party to EPC and PCT, even Article 62 is interpreted in a way as if it limits the number of examinations with three times, the applicant should be given the right to request the application of the favorable rules of EPC and PCT.

Article 96 of the EPC brings out crucial principles anticipating the active participation of the applicant to the examination process. In this context if the patent application does not fulfil the requirements of the EPC, the Examining Division shall invite the applicant as often as necessary to file his observations within a period to be fixed by the Examining Division.

The precedents[1] of Technical Board of Appeal of the EPO rules that a valid refusal of the application can be made only if the applicant used properly his defence rights or if he declares to renounce to this right. In the same way the precedent of the Enlarged Boards of Appeal numbered G1/97, confirm that the opportunity of the parties to present comments and opinions is a fundamental right.

Similarly in the PCT, in the context of the procedure for granting a patent with examination there is no limitation to the number of examination and the applicant is entitled the opportunity to complete and modify his application.

On the procedure at the national level, according to Article 28 of the PCT, the applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.

As is seen from the above, none of the mentioned international treaties, to which Turkey is a party, limits the number of the applicant’s opportunity to provide his opinions and amending the application.

If, somehow Article 62 of the Law is interpreted as if it limits the examination process with three examinations and limited number of statements of opinion then it should be admitted that there is a contradiction between the national legislation and the related provisions of the international treaties having the force of law. However according to the clear statement of the last sentence of Article 90 of the Constitution and Article 4 of the Law, it is necessary to comply with the provisions of the international treaties and to apply the provisions of the international treaties which provide the opportunity to file opinion and to modify the claims as often as necessary to the favour of the inventor.

Özge Atilgan Karakulak
Selin Sinem Yalincakli