Patent Registration, Patentability Requirements, and Determination of Inventive Step

Patent Registration

Patent registration is the process of transforming an idea or invention into a legal entity. Under the Industrial Property Law (IPL) system, a patent is a registered right that protects the technical solution of an "invention," providing an absolute monopoly. This registration process is not merely about obtaining a document; it's about the state providing a protective shield for an innovative technology for a specific period (20 years).

Legal Nature of Registration

In the Turkish legal system, patent rights arising from registration . This means that regardless of how secretly the inventor keeps their invention or how much they use it, they cannot exercise the right to prevent third parties from using it as granted by patent law unless it is registered. Registration does not apply retroactively from the date of registration; however, after registration, it grants the rights holder complete control over producing, selling, or importing their invention.

The Anatomy of the Application Process

The patent registration process involves the review of the technical documents (specification and claims) submitted by the applicant by the institution's experts in a "laboratory" environment. The process generally goes through the following stages:

1. Application: Submission of a description to the Turkish Patent and Trademark Office detailing the technical specifications of the invention, how it works, and the novelty it provides.
2. Formal Review: Checking the file for compliance with legal requirements (signature, fees, completeness of documents).
3. Research: Determining whether the applied-for invention is "new" by searching patent databases worldwide.
4. Review: The process of verifying whether an invention involves an "inventive step" by experts in the field.
5. Registration and Publication: The invention, having successfully passed all examinations, is registered in the patent register.

Why Should We Register It?

Registration is critical not only for stopping competitors but also "financing investment ." Investors and banks will invest capital in a registered "patent," not an unregistered "idea." A patent is the title deed to a company's technological asset. The registration process protects the invention from the application stage until its completion, granting the applicant priority, like a "right of first refusal."

In general, patent registration is a technical "selection and approval" mechanism through which the inventor transforms their work into commercial protection. Through this system, the technological knowledge of society is documented, and the inventor, by proving their rights through registration, can operate confidently in the market.

Patentability Requirements

The patent system is designed to protect not every new idea, but only those "inventions" that are technically advanced, original, and feasible. Article 82 of the Industrial Property Law No. 6769 defines the three fundamental criteria required for an invention to be patentable as "patentability conditions." These conditions form the legal and technical backbone of the patent system.

1. Novelty

To be patentable, an invention must be "new," meaning it does not belong to the "priority state of the art." The priority state of the art includes any information (written, oral, or visual) that has been made available to the public anywhere in the world prior to the application date.

• Absolute Novelty: The novelty criterion knows no geographical boundaries. It is not enough for your invention to be unknown in Turkey; its novelty is negated if it has been exhibited at a local fair in any part of the world, for example, in a South American country, or detailed on a website.
• Exception (Explanation): Statements made by the inventor or third parties with their knowledge (such as participation in a trade fair or academic presentation) within the 12 months preceding the application date do not "disrupt novelty" from the application date onwards. However, this period (12 months) must not have been exceeded.

2. Inventive Step

The inventive step is the most subjective and technically demanding criterion in patent law. The invention must not be "obviously deducable" from the known state of the art by a person skilled in the field.

• Person Skilled in the Art: This is a fictional character in law. They are a mediocre expert with average knowledge and skills in the technical field in which the invention was made, access to existing technical documentation, but not a "creative genius."
• Obviousness Test: If an expert is asked to "combine these two pieces of information in the known state of the art," and they can easily deduce your invention, then your invention is "obvious" and cannot be patented because it does not involve an inventive step. The invention must offer a solution that will "undoubtedly surprise" an expert in the technical field.

3. Industrial Applicability

The invention must be able to produce or use something in any branch of industry (agriculture, healthcare, manufacturing, information technology, etc.).

• Physical Feasibility: Theoretical or science fiction ideas cannot be patented. The invention must be technically functional and reproducible (suitable for mass production or application).
• Exception: For an invention to be industrially applicable, it does not necessarily have to achieve "commercial" success; it is sufficient for it to function technically.

Filtering Mechanism in the Patent System

These three criteria are used as a filter by the patent office's experts. For example, you may have designed a very new product, but if that design can already be easily produced using standard engineering knowledge in that sector (if there is no inventive step), you cannot obtain a patent.

These conditions guarantee that "exclusive rights" are granted only to inventors who have made a genuine technical contribution. The legislator aimed to prevent the "unnecessary restriction" of the market by patenting already known or easily predictable technical solutions. Understanding the patentability requirements is essentially the most fundamental legal analysis that allows you to predict whether your application will be rejected.

Determining the Inventive Step

The inventive step is the most critical line between the acceptance and rejection of a patent application. The fact that a product is "new," meaning it has never been made before, is not sufficient for it to be patented; because "not everything new is an invention." According to the Industrial Property Law No. 6769, experts the "Problem -Solution Approach" when examining the "inventive step" requirement.

1. Stages of the Problem-Solving Approach

To objectively determine whether your invention is obvious, experts at the Turkish Patent and Trademark Office (TÜRKPATENT) follow these three steps:

1. Determining the Closest Technique: The expert selects the closest existing technology ("closest technique") in the technical field to which your invention belongs.
2. Defining the Technical Problem: How does your invention differ from the "closest existing technology"? What technical problem in that existing technology does your invention solve? At this stage, the "technical impact" of the invention is determined.
3. Obviousness Test: The expert asks the following question: “Could an expert in the field, using existing techniques, arrive at your invention to solve the defined technical problem?” If the answer is “Yes, this solution is an expected and easily attainable method for an expert in that field,” your invention is deemed “obvious” and rejected because it does not meet the inventive step criterion.

2. Person Skilled in the Art Criterion

The most important element in the review process is the profile of the "expert." This person;

• He/She possesses general knowledge in the technical field to which the invention belongs.
• They have access to all available technical documentation (published patents, articles, etc.).
• However, it is not creative; it merely possesses “standard” knowledge and skills. If your invention is the sum of two different technical pieces of knowledge that can be easily combined by this “standard expert,” then the inventive step is not considered to have occurred.

3. The Role of the Consumer/Inventor in the Review Process

When the institution's expert believes there is no inventive step, they send the applicant an "interim report." This is the most critical point in the process. At this stage, the inventor or patent attorney:

• How the invention represents a "creative leap" from known technology,
• Why current techniques cannot solve this problem,
• The inventor must defend, with detailed arguments, why the technical impact of the invention is not “obvious.”.

4. Proving Technical Effectiveness

The most effective way to prove an inventive step is to demonstrate that the invention produces an “unexpected technical result.” For example, consider a chemical mixture; if combining known components results in inefficiency, but your invention increases efficiency by 50%, this “unexpected result” is the strongest evidence of an inventive step.

The method of examining the inventive step is a purely logical and technical filter. Experts act not on personal opinions, but on the data in the technical documentation. Therefore, when preparing the application file, explaining not only "what you did" but also "why it was difficult for an expert in that field" is the most important factor in determining the chances of registration.

Subjects for which inventions are not patentable and inventions that operate with computer programs

While the patent system is designed to protect all kinds of technological advancements, it strictly excludes certain topics due to legal and ethical boundaries. In particular, in today's digital age, the issues of "software" and "computer-based inventions" represent one of the most debated and complex boundaries in patent law.

1. Subjects That Cannot Be Patented (Article 82/2 of the Industrial Property Law)

The law excludes "non-technical" or "ethically unacceptable" areas from patent protection:

• Discoveries and Scientific Theories: Finding what exists in nature is not the same as producing a technical solution.
• Mathematical Methods: Abstract numerical operations cannot be patented.
• Literary and artistic works: They are protected by the Law on Intellectual and Artistic Works.
• Mental Activities: Not just methods for organizing a task or the rules of a game.
• The Human Body and Treatment Methods: Surgical and therapeutic methods applied to the human or animal body (due to ethical and humanitarian considerations).
• Public Order and General Morality: Inventions that contradict societal values, fundamental principles of religion, or law.

2. Computer Implemented Inventions (CII)

This is the area where most mistakes are made. Law No. 6769 "computer programs alone" (source code, algorithm, software itself) to be non-patentable. The software itself is protected by copyright. However, "technical processes by which the software solves a technical problem" can be patented.

• Technical Character: If the software you write improves the performance of the computer itself (for example, an algorithm that optimizes processor speed), better manages a sensor, or improves the image quality of a medical device, it is a "technical invention" and can be patented.
• Why would it be rejected? If your software is merely a “financial transaction” (for example, an algorithm for bank account transfers), it is considered a “business method” and the patent is rejected because it does not solve a technical problem.
• Review Criteria: Experts ask the question: “Does this software create a physical impact or a technical improvement on the hardware while running?”

3. The Line Between Software and Invention?

The following examples are helpful in understanding this distinction:

1. Rejected: “Accounting software that calculates taxes faster.” (This is a business method, not a technical problem solution.)
2. Accepted: “Software that optimizes a car's braking system in milliseconds by processing data from a sensor.” (This is a technical solution and it solves a technical problem.)

In inventions involving computer programs, the patent application must be structured not only around the "software code" but also around "how and what technical problem the software solves." Simply filling the file with lines of code makes obtaining a patent impossible.

This section is the clearest evidence that patents are a system that protects “concrete technical solutions, not abstract ideas.” The law looks not at “how clever an idea is on paper,” but at “what kind of technical improvement it creates in the physical world.”.

Converting a Patent Application to a Utility Model and a Utility Model Application to a Patent

Patents and utility models are two complementary protection tools. However, both have different advantages in terms of "speed" and "depth." The Industrial Property Law No. 6769 offers applicants a "safe harbor" strategy: the possibility of switching from one type of protection to another.

1. The Conversion Mechanism: Why is it Needed?

When you apply for a patent for an invention, the process is quite lengthy (research, examination, technical analysis). Sometimes, after review by experts, your invention may be deemed to lack sufficient inventive steps (i.e., too simple for a patent). At this point, instead of canceling your application and losing all your hard work, to "convert it into a utility model" comes into play.

• Converting to a Patent: The inventive step criterion is higher for patents. If, during the application phase, it is determined that "this invention cannot be patented," you can switch to "Utility Model" protection (requiring less creativity) without withdrawing your application.
• Converting to a Utility Model: Conversely, if you have applied for a utility model for a very original invention, but the 10-year protection period (20 years for a patent) is insufficient for you, you can convert the application to a "Patent" while the examination process is ongoing.

2. Terms of Conversion

The conversion process cannot be done randomly; it is subject to certain legal limitations

1. Review Process: Conversion requests can be made "until a registration decision is made" regarding the application. Conversion is not possible after a decision has been made.
2. Acquired Rights: When a conversion occurs, your initial application date (priority right) is preserved. This means that when you convert a utility model application to a patent, you will still use your "initial application date," which continues to protect you against competitors.
3. Fees: An additional request and administrative fee is required for the conversion process.

3. Strategic Decision: Patent or Utility Model?

This ability to transform is an area of ​​“strategic maneuvering”:

• Utility Model (Small Patent): Provides quick results, is cheaper, and only requires "novelty" and "industrial applicability." Excellent for mechanical improvements and minor design changes.
• Patent (Under Review): The process is lengthy and costly, but it provides 20 years of protection and registers that you have taken a "creative step." It is essential for large R&D projects and groundbreaking technologies.

In short, the possibility of conversion is a "legal backup plan" for the inventor. If you realize that the nature of your invention (or market conditions) has changed during the process, you can optimize the process without losing your rights by making this conversion before your application is rejected.