It’s your right to use
Yeşim Metin of Destek Patent assesses prior use rights in Turkey

The prior use right is accepted by the Turkish Patent Law and mentioned in Article 77 (Decree Law No: 551 for Patents) under the title of Rights Conferred by Prior Use.

It reads as follows: “The rights holder of a patent shall not have the right to prevent person or persons, who, in good faith, between the date of filing of the application and the date of priority, had worked the invention in Turkey or had made serious and effective preparations to work the said invention, from continuing to work the subject matter of the patent, in the same manner as before, or from commencing its working as of the preparations made to this effect.”

“However, third persons may continue working the subject matter of the patent, in the same manner as before, or commence its working as of the preparations made to this effect, only to the extent necessary for meeting the reasonable needs of their enterprise.”

“Such right to work the invention shall only be transferable with the enterprise.”

“The rights conferred by a patent within the meaning of Article 76 shall not extend to acts related to products put to sale by persons indicated in Paragraph one this present Article.”

The aim of the prior use right is to protect the persons having used the invention by acquiring the technical teaching of the invention and putting it into use in good faith without knowing the presence of the patent before the use.

In this regard, the prior use right is an exception and the protection granted by the patent does not extend to the right of the prior user.

The prior use right is only a relative right and not an absolute right, namely the holder of the prior use right can only use its right but cannot prevent anybody from using the same right.

In other words, the holder has only the right to use but not the right to prevent third parties from using patent.

The prior use right is limited to the use of the undertaking, namely the right can be transferred only with the undertaking itself and can be subject to the inheritance or pledge.

If the party having the right to use transfers the undertaking, it cannot take advantage of that right any longer.

This is also valid for partial transfer of the undertaking, which covers the invention subject to the patent.

There are three conditions of the right to use:

(i) The person claiming the right should possess the invention;

(ii) The party should have started to use the invention in Turkey’s territory or have seriously and effectively taken preparations for using the invention; and

(iii) The party should be in good faith.

Concepts and requirements of prior use rights

Nature of the possession

The holder of the prior use right should acquire the invention by its own efforts and works, or by transfer from others. In this regard, the holder of the prior use right should be in possession of the invention directly or by transfer.

The invention subject to the possession of the prior user should be complete. In other words, any incomplete possession, for example, not yet achieving the inventive step, will not be considered as possessing the invention.

The holder of the prior use right should subjectively have the technical teaching of the invention in mind and should be able to objectively put the invention into practice.

The date of the use

The holder of the prior use right should have used and taken serious steps/measures to use the invention in Turkey before the application date or the priority date (if priority was claimed) of the patent/patent application.

In Turkish jurisdictions, Article 77 (Decree Law No: 551) refers to “the date between the application date and the priority date” to set the time where the invention was firstly used by the holder of the prior use right. However, the reference date/time interval as mentioned in Article 77 is contentious in Turkey. The reference date for starting the prior use or the existence of prior use should be construed as being “on the application date” or “on the priority date”, which can also be construed “before the application date” or “before the priority date”.

However, there are adverse opinions as to the reference date, which argues that the prior use right is a right granted between the application date and priority date as from the viewpoint of the literal commentary. The same approach has taken place in the recent patent law draft prepared by the Turkish Patent Institute.

We do not agree with the second opinion mentioning the reference date for use as “the date between the application date and the priority date” because of the fact that if any priority is not claimed, there is no possibility to claim the existence of prior use. Further, in the existence of the priority claim, any person using the patent before the priority date will not be able to take advantage of the prior use right. We do not consider that the lawmaker intended to restrict the date between the application and priority dates.

Nature of the use

The nature of “the use” is not very clear in the article. In view of the leading opinions in the law, we comment that the use implies the use of the invention in the undertaking of the prior use right holder for use or in any other undertaking but in the name of the holder for use.

The manufacturing of the product for sale, selling and marketing the product, or any product derived from the method subject to the patent, should be accepted as being the use. On the other hand, various resources in Turkey advise that any preparation for filing patent applications, making production for samples, making any preparations for licensing, obtaining authorisation from the governmental authorities, placing orders, and taking part in auctions, are not sufficient to claim the right of prior use.

Also, any discontinuation of the use voluntarily, or abandoning the use, will prevent the claim for prior use later.

Taken preparations for the prior use

The law does not define the scope of the serious preparation subject to the prior use.

Preparing the drawings and models, entering into contractual relationships, and purchasing machinery and equipment for production, should be accepted as being the use.

On the other hand, marketing research, experiments and laboratory studies should not be construed as being serious preparation for the use.

The place of prior use

The decree law is clear enough as to the place of the prior use. The prior use can be only argued where the use has taken place in Turkey. Thus, any use or preparation for use abroad will not be accepted for claiming prior use.

The good faith

The good faith is the requirement for claiming prior use. The party should be in good faith where it has obtained the invention subject to the patent.

Before the disclosure of the invention, any illegal or unfair obtainment of the invention from the patent holder, ie, by stealing, seizing or fraudulent action, will be considered as bad faith and therefore, it is not possible to claim prior use by acquiring it that way.

Also, it is not possible to the acquire prior use right after the inventor has disclosed the invention to the public before filing a patent application. In Turkey, it is significant to note that anyone can file a patent application within 12 months after disclosing the invention, a grace period not affecting the novelty of the invention. Even though there is no case law or obvious explanation, it is argued that it would not be possible to claim prior use based on the disclosure of the invention during the 12-month grace period.

Content of the prior use right

The extent of the use

The law states that the prior use right is limited to the “reasonable needs of the undertaking”.

The word “reasonable” requires to be evaluated case by case. But, it implies that there should not be excessive use of the invention by the holder of the prior use right.

The undertaking should be considered as being united. For example, any plants, workshops or branches are considered the undertaking and therefore any production in the parts of the undertaking should be considered under the scope of the prior use. In other words, the prior use right cannot be limited to only one or specific parts of the undertaking (for example, hub of the company, the plant in a specific region of the company, and so on).

Any expansion of the undertaking, increasing of the production or changes in the kind of use will be acceptable in terms of the prior use.

Effect of the prior use right after sales

It is largely agreed that any activities as to the products put into sale by the prior use will be out of the scope of the patent rights.

Transfer of the prior use right

The prior use right is bound to the company and is transferable with the company only. If the company is transferred without a prior use right or the company is stopped and closed, the prior use right will come to an end. It is not possible to duplicate or split the prior use right.
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