All YOU NEED TO KNOW ABOUT THE “DECLARATION OF USE OR NON-USE” IN TURKEY
The requirement of use is regulated by Article 130/2 of the Turkish Patent Act (“TPA”). Under the article, the statutory period for using a patent is three years from the publication of the decision granting the relevant patent or four years from the application date, whichever ends later. During the course of the protection, the use of a patent should not be discontinued without a legitimate reason for more than 3 years.
In case of European patents validated in Turkey, the initial 3-year period for the use requirement is calculated based on the publication date of the European patent in the Turkish Patent Bulletin (not the publication date in the European Patent Bulletin). This also applies to PCT National Phase Entries.
In the event of a lack of filing work declaration, the patent application could not be revoked, however; in case of court action, it would be subjected to a compulsory license.
If the use of the patent is not possible, you can either file a “Declaration of Legal Excuse” or a “Declaration of Non-Use” petition.
The Slight Difference Between the “Declaration of Legal Excuse” and the “Declaration of Non-Use”
Declaration of Legal Excuse means the working requirements mentioned in the TPA were not fulfilled by the applicant because of legitimate economic, legal, or technical reasons. By using this option, the applicant declares that they are not using the patent in Turkey because of some reasons. But this means that they will use the patent after these reasons are resolved.
Declaration of Non-Use means working requirements mentioned in the TPA were not fulfilled by the applicant. By using this option, applicants simply declare that they are not, and will not be, using the patent in Turkey. In this option, the applicant does not have to give any reason for such non-use.
Where the declaration is filed for non-use, it would be preferable to file for legitimate reasons making sure that, when needed, the evidence for such legitimate reasons can be provided to the court or the Competition Board.
Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the applicant.
Ongoing procedures of marketing authorization would be an example for the Declaration of Legal Excuse.
If the patented invention is used or will be used in Turkey, it would be useful to file a work declaration before the Turkish Patent Institute within the due date.
Market conditions are (to be) taken into consideration when/for assessing use/working (Article 130/2 of the Law on Industrial Property No. 6769).
The applicant must show that the product or method subject to patent grant is actively marketed in Turkey.
How to file the “Declaration of Use” and which documents would be considered as “proof of use/work”?
Declaration of use should be filed to the Turkish Patent and Trademark Office.
Following documents can be used as evidence:
* A legible copy of an invoice from the applicant to the Turkish firm
* Transportation certificate
* Catalogue of the products
* ATR1 certificate of origin and Customs Declaration from exporting party
These documents shall clearly indicate the exporting – importing parties as well as the patent subject to importation into Turkey. If the exportation is done by a company other than the patentee himself, a declaration of authorization prepared by the patentee should be submitted before the Turkish Patent and Trademark Office.
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