How to avoid picking a patent or two

Double patenting is a practice that Turkey has made clear is not possible. Yeşim Metin of Destek Patent explains

Turkish patent law does not allow double patenting. The Patent Law states that the same subject matter cannot be protected by both patent and utility model. On the other hand, it is possible to file both national application and European patent and Patent Cooperation Treaty (PCT) applications provided that there is a priority connection between those applications.

PCT national phase applications

If you file parallel applications, that is filing both PCT and national applications simultaneously, the national utility model or patent application should have been withdrawn or not be in force because of rejection, cancellation or any other reason when it is requested to enter the national phase through the PCT. Otherwise, the PCT application will be directly rejected due to the prohibition of double patenting in Turkey and the principle of first-to-file.

An applicant that files a PCT application in parallel with a direction patent or utility model application in Turkey can have the patent granted if the international preliminary examination report (where requested) is favourable. This is because the Turkish Patent Law allows PCT national phase applications to be granted based on the positive report without further examination. In any case, the applicant should withdraw or waive the national utility model or patent rights before national phase entry.

European patent validations

The national regulation implementing European patents in Turkey states it is not possible to protect the same invention with national and European patents in Turkey if there is a priority connection between them.

Rule 21 of the regulation states: “If the same entity or its successor obtains both a national patent/utility model and European patent for the same subject matter, both of which have the same filing date or the same priority date if priority is claimed, the national patent/utility model becomes invalid if the European patent is maintained without any amendment if any opposition is filed, or after the expiration of the opposition period.”

In this respect, if a European patent is validated in Turkey, the corresponding national patent or utility model, if any, is automatically cancelled and the European patent takes its place if no amendment is made to the cancelled national patent/utility model during the opposition period.

Divisional applications

Double patenting most commonly arises in the case of a parent patent application and a divisional application to the same invention. In the Turkish Patent Law, the last paragraph of the Article 45 states: “Each divisional application shall have the same date of filing as the initial application provided that their subject matter remains within the scope of same. Where priority is claimed for the initial application, each divisional application will benefit from the priority right or rights claimed for the initial application.”

As seen above, the Turkish Patent Law discusses the scope of the divisional application in respect of exceeding the scope of the parent patent but does not provide any specific rule regarding a claim of a divisional application also being encompassed as a specific embodiment in the broader claims of a parent application.

There is also no case law directed to divisional applications where double protection is discussed and ruled in view of the scope of the parent patent.

Article 129 of the Turkish Patent Law only states that if the subject matter of a divisional patent exceeds the scope of the parent patent application, the divisional patent will be declared invalid by the court.

Where the grounds for invalidity concern only part of a patent, a partial invalidation will be handed down by cancellation of the specific claim(s). An individual claim may not be partially invalidated, according to the law.

European Patent Office case law

Before the European Patent Office (EPO), divisional applications can be filed under Article 76 of the European Patent Convention (EPC). A European divisional application is a new application that is separate and independent from the parent application, unless specific provisions in the EPC require something different.

The EPO considers that parent and divisional applications may not claim the same subject matter. There are no specific provisions regarding double patenting in the EPC, but the principle of this ban on double patenting is set out and is based on the idea that the applicant has no legitimate interest in proceedings that give rise to the grant of a second patent in respect of the same subject matter for which the applicant already holds a patent.

The possibilities for double patenting, and therefore the problems associated with this practice, are likely to diminish following the amendment of Rule 36 of the EPC to limit the time within which divisional applications can be filed.

According to the examination guidelines, it is permissible for an applicant to have two applications with the same description where the claims are distinct in scope and are directed to different inventions.

However, in the event there are two or more applications from the same applicant, designating the same states, and the claims of which have the same filing or priority date and relate to the same invention, then one or more of the applications must be amended in such a way that they no longer claim the same invention, or alternatively, the applicant must choose which one of the applications will proceed to grant.

In the event there are two applications having the same effective date, but in the name of different applicants, each application must be allowed to proceed as if the other did not exist.

The guidelines also require that the subject matter of the claims of parent and divisional applications must be clearly distinguishable. Each application must claim its own subject matter (A or B), but one of the applications may also claim the subject matter of the other (A plus B).
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