LEGAL PROCEDURES REGARDING PATENTS / LAWYER FERHAT KÜLE

A patent is a powerful legal document that grants its owner the exclusive right to use, produce, sell, or import their invention for a specified period. However, this exclusive right is not merely a static means of protection; it is also a dynamic entity in commercial life, legal transactions . The economic value of a patent is maximized through these legal transactions (transfer, licensing).

In this comprehensive article, we will examine in depth, within the framework of the Industrial Property Law (IPL), how patents legally change hands (transfer), how they can be leased (licensed), and how they can be made available for use through state intervention when required by public interest (compulsory licensing). We will also include key Supreme Court precedents and reinforce our understanding with frequently asked questions.

I. Legal Transactions Regarding Patents: Transfer and Assignment

According to the Industrial Property Law (IPL), patent rights are legally treated as movable property and can be subject to all kinds of transactions

A. Patent Transfer: Transfer of Ownership

Patent transfer is the process of transferring patent rights, in whole or in part, from one owner to another . Through this transfer, ownership of the patent changes hands; the transferee becomes the new legal owner of the patent from that moment on and gains the right to use all the rights.

1. Formal Requirements and Validity: According to Article 147 of the Industrial Property Law, for a patent transfer to be valid, the agreement must be in writing and the signatures must be notarized ; simple written form is not sufficient. Transfer agreements that do not comply with these requirements are absolutely null and void

2. Registration Requirement: The transfer be . Registration is essential to ensure the transfer against third parties (even those acting in good faith). License or transfer transactions against the previous owner of the patent may be considered valid as long as the registration is not completed.

B. Transfer of Patents Through Inheritance and Enforcement

Patent rights by legal or appointed heirs if the owner is a natural person. Furthermore, since a patent is an asset, it can be seized and sold at auction in the event of enforcement proceedings (seizure and sale of patents are subject to special procedures). Notarization is not required for these transfers, but registration in the registry is still mandatory.

II. Licensing a Patent: Leasing the Right to Use

A licenseis the transfer of the right to use an invention (manufacturing, selling, importing, etc.) by a patent holder to a third party for a fee and under specific conditions, while preserving the patent holder's monopoly rights. A license does not transfer ownership of the patent; it only grants the right to use it. The patent holder retains ownership, while the licensee obtains permission to use the invention.

A. Legal Framework of the License Agreement

1. Formal Requirement: Just like with transfers of ownership, the license agreement be in writing and notarized to be valid (SMK Article 147/1).

2. License Types and Scope:

   • Exclusive License: Once the patent holder grants this license, neither they nor any other third party may use the licensed invention . The right to use the invention belongs exclusively to the licensee. This license also grants the licensee the right to file a patent infringement lawsuit against the patent holder.

   • Non-Exclusive License: The patent holder can license the invention to multiple individuals simultaneously while continuing to use it themselves. The licensee's legal recourse is generally limited.

3. Geographic and Time Restrictions: The license may be limited to a specific region (e.g., only the Marmara Region) or a specific period (e.g., 5 years).

B. License Fee and Royalty Payment

In exchange for the right to use the product, the licensee makes periodic payments to the patent holder, usually royalties . These payments may be agreed upon as a percentage of the licensee's sales turnover, a fixed amount per unit produced, or a fixed annual fee.

Example of a Supreme Court Decision (Formal Requirements and Validity in Licensing Agreements)

Court of Cassation, 11th Civil Chamber, Case No: 2021/XXXX, Decision No: 2022/YYYY

Case Law Emphasis: “For transactions involving the disposition (transfer, licensing) of patent rights, the legislator has prescribed a strict formal requirement for public order : notarization . Even if signed in simple written form or confirmed via email, a license agreement not subject to notarization is legally invalid under Turkish law , and this invalidity cannot be eliminated even by subsequent actions taken by the parties (such as making actual payments). It cannot be claimed that the patent has been licensed based on an invalid agreement.”

III. Compulsory Licensing Regime: Limits on Freedom of Enterprise (SMK Articles 129 et seq.)

Although patent rights are a property right guaranteed by the Constitution, this monopoly can be limited by state intervention in cases of public interest or abuse of this right by the patent holder. Compulsory licensingis the granting of permission to a third party to use an invention without the consent of the patent holder, by a decision of the competent authority.

A. Conditions for Granting Compulsory Licensing

Compulsory licensing is an exception to protect a constitutional right (health, safety, etc.) and is only applicable under strict conditions specified in the law.

1. Compulsory License Due to Non-Use (SMK Article 131):

   • Failure to seriously and effectively use the patented invention in Turkey, or to interrupt its use, within three years from the date of publication of the patent registration or within four years from the date of filing the patent application

   • Usage is not at a level to meet domestic market demand.

2. Compulsory Licensing Due to Public Interest (SMK Article 132):

   • Situations where the use of the patent is vital for reasons such as national security, public health, or significant economic/technological development. (e.g., the inability to ensure an adequate public supply of a drug during a pandemic.)

3. Compulsory Licensing Due to Dependent Patents (SMK Article 133):

   • A second patent must be dependent on (i.e., cannot be enforced without using) a previous and stronger patent. If the second patent represents a significant technological advancement, a compulsory license may be requested from the holder of the first patent.

B. Legal Consequences of Compulsory Licensing

The decision to grant a compulsory license is made by the competent courts or the Council of Ministers .

• Reasonable Compensation: The compulsory licensee is obligated to pay the patent holder a reasonable fee (compensation) . This fee is determined by the court.

• Scope and Duration Limitation: The license is limited solely to the purpose and duration. This license is not exclusive and is non-transferable.

Example of a Supreme Court Decision (Seriousness of the Obligation to Use)

Court of Cassation, 11th Civil Chamber, Case No: 2016/XXXX, Decision No: 2018/YYYY

Case Law Emphasis: “When evaluating whether the patent holder has fulfilled their obligation to use the invention, the criterion should be whether the use is serious, continuous, and meets an economic need . A small number of trial productions at the laboratory scale or the existence of foreign license documents alone do not satisfy the sufficient use requirement stipulated by the Law. A compulsory license decision should be applied as a last resort to ensure a fair balance between protecting the patent holder's monopoly rights and making the invention available for the public good .”

IV. Frequently Asked Questions (FAQ)

1. Can a patent application be transferred before it is registered?

Yes. A patent application can be subject to legal transactions such as transfer and licensing even before registration (i.e., while still under examination). These transactions the same notarized written form requirements and registration as a registered patent. Once the transfer is complete, the application process is handled by the new applicant.

2. What is the most important legal consequence of not registering with the registry?

The patent registry good faith protection against third parties . For example, if person A transfers their patent to person B through a notary but does not register it; and A later transfers the same patent to person C, who is unaware of B's ​​transfer and acts in good faith, and registers it, C becomes the legal owner of the patent. B can only claim damages from A.

3. Does granting a compulsory license affect the patent holder's rights in other countries?

No. Patents territorial protection. A compulsory license decision in Turkey does not in any way affect the patent holder's patent rights and monopoly in another country such as the USA, Germany, or China. The effect of the compulsory license is only within the borders of the Republic of Turkey.

4. What should be done if the License Agreement is breached?

If the licensee fails to comply with the terms of the contract (e.g., payment obligations or production quantities), the patent holder (licensor) has the right to terminate the contract . Furthermore, the patent holder may initiate enforcement proceedings or file a lawsuit for unpaid royalties . If the licensee infringes upon patent rights outside the scope of the contract (e.g., by licensing to a third party without permission), this may also be subject to a patent infringement lawsuit.

V. Conclusion

The transfer of patent rights, licensing, and compulsory licensing regimes are fundamental mechanisms that ensure the commercial functioning of Intellectual Property Law. These processes determine the investment value of a patent, with formal requirements and registration records is key to legal certainty and proof of ownership. Compulsory licensing constitutes an important exception, balancing monopoly rights against public interest. To avoid loss of rights in these complex processes, working with a lawyer specializing in Intellectual Property Law is of paramount importance.