Okan Can

Senior Partner

Remedies in case of patent infringement

Patents

17 September 2024

10

The patent owner can have different options to claim in case of a patent infringement case under the Turkish Law which can be summarized as following :

1/- Permanent & Preliminary injunctions 

The IP Code enables the patentee to request simultaneously the ‘determination and prevention of infringement’ from the court as a part of the permanent injunction order by the ruling. The patentee is entitled to obtain a preliminary injunctions order in the following situations; within the context of the main infringement action; within the context of the evidential action; or independently. In each case, The preliminary injunctions requested and carried out ex parte or inter partes, subject to the discretionary competence of the Court. It is to be noted that in practice the courts are quite conservative in granting ex parte preliminary reliefs.
A preliminary injunction request may be refreshed at any stage of the action when there is a new development on the matter and a change in the conditions, such as the issuance of a favourable expert report, etc. Preliminary injunctions are deemed to be urgent matters to be handled according to Turkish procedural law. The most important requirement is to submit substantial evidence attesting a prima facie infringement in order to convince the judge that there is risk of an infringement. Another requirement would be to deposit a guarantee payment before the Court (on discretion of the judge) for the execution of the preliminary relief order once the decision is rendered by the Court.The amount of the guarantee payment depends on the discretion of the Court in view of the value of the dispute, (i.e., the commercial value of the patent). Finally, the Turkish IP Courts can also reverse preliminary preliminary injunction orders upon the deposit of the guarantee payment by the defendant. In such case, the Court may order a preliminary relief that will prevent the patent holder from enforcing its patent rights against the defendant parties.
There are no practice for protective letter in Turkish procedural law.

  2/- Compensation of material and moral damages  The patentee is entitled to ask for material and moral compensation. The calculation of the material compensation is based on the loss of profit.  Article 151, Paragraph 1 reads that the damages suffered by the patentee cover both the actual loss and the loss of profit. The loss of profit can be calculated according to one of the below methods preferred by the right holder:  probable income that may be earned by the right holder if the competition of the infringer did not exist;  net income earned by the infringer of the industrial property right; and  the licence fee required to be paid in case the infringer ofthe  industrial property right used such right by means of a licence agreement as required by law.    The IP Code stipulates that factors, such as the nature and extent of infringement, particularly the economic importance of the industrial property right or the number, term and type of licences related to the patent in dispute and at the time of infringement, shall be taken into consideration when calculating the loss of profit.  A patentee who prefers the method of calculation in points (a) or (b) above may request to add an appropriate amount to the calculated compensation in case the patent has a determinant role in the demand for the infringing product in the market.  In addition, the patentee is entitled to ask for moral and reputational compensation, where the reputation of the patent right suffers damage, in the event the products or services forming the subject of the right were used or produced in an inferior manner or where such products are launched in the market or made available in an improper manner.    3/- Confiscation of infringing products and the devices and machines used in the production of such products  The patentee is entitled to ask for moral and material compensation and the seizure of the infringing products and devices and equipment used for their production to the extent these devices and equipment are not used in the production of other products produced by the adverse party.    4/- Measures to prevent the continuation of infringement  The patentee may also request the destruction of the infringing products, devices and machines used for their production if this is inevitable for prevention of the infringement or may ask for the change of the shape of the infringing products, devices and machines used for their production at the expense of the infringing third party, especially to prevent the continuation of the infringement.    5/- Requesting the assignment of the infringing products and manufacturing devices  It is possible to request the assignment of the property rights on confiscated infringing products, on devices and machines used in the production of such infringing products, and the deduction of the value of such products, devices and machines from the total amount of the compensation determined by the Court.    6/- Publication of the court decision in daily newspapers or by means of similar mediums in whole or in summary  The patentee may request the publication of the finalised verdict, in whole or in summary, in daily newspapers or by other means, or the notification of the parties having interest in the legal proceedings at the expense of the adverse party.    viii Execution and suspensive effect of the decision  The final injunctions can be executed upon the finalisation of the Court’s decision. The finalisation of the Court’s decision matures upon the exhaustion of all legal routes, such as the appeal before the Regional Appellate Court and the Supreme Court, or in the lack of an appeal by the parties.  On the other hand, preliminary relief orders remain valid until the finalisation of the Court decision unless the Court renders a decision for the removal.  As to the suspensive effect of the appeal, the general rule according to the Civil Procedural Law is that the appeal does not have suspensive effect as of Article 367, Paragraph 1, but it does have a suspensive effect as of Article 367, Paragraph 2 for cases involving the ‘right of persons, families, real estate’. The case law rules that the infringement of IP rights considered as acts of unfair competition are deemed to be closely related to ‘personal rights’. For all such cases, the appeal has suspensive effect.   Article 162 of the IP Code rules that in all actions instituted against the decisions of TurkPatent and in invalidity actions the decision of the court is not executable until it becomes final. 

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