No contribution to the invention? No utility model protection in Turkey – the rules explained
Utility model protection, which has been available in Turkey for around 25 years, is an attractive option for inventions with obvious technical solutions.
The enactment of the Turkish Industrial Property Law in January 2017 introduced two new substantial requirements for mandatory novelty search proceedings and claim content. In particular, features that do not contribute to the invention are not taken into consideration when assessing novelty.
In order to be registerable, a utility model application must be novel and industrially applicable. The accessible prior information for the novelty assessment should be international in scope (ie, novelty is applicable in an absolute sense). That said, where the application appears to have a wide span but a claim feature does not contribute to the invention, it will be excluded from the assessment of novelty.
Article 142(2) of the Industrial Property Law states that “technical features not contributing to the subject matter of the invention are not taken into consideration for the assessment of novelty”. This suggests that not only non-technical features but also features – despite being technical – without a technical effect on the solution of the invention’s technical problem are excluded from the novelty assessment.
Therefore, the novelty assessment for Turkish utility model applications is above a standard novelty assessment (eg, the photographic identicality test that prevails in several jurisdictions).
However, neither the Turkish Patent Office nor Turkish case law provide a test to identify whether a claim feature contributes to an invention. In addition, inventive step is not a requirement for utility model protection. Yet the test to determine to what extent a technical claim feature supports its contribution to the invention – which should not reach a point of obviousness – is yet to be developed for consistent implementation.
Applicants should therefore provide sufficient technical background for the effects of features in independent and dependent claims when drafting applications. Typically, claim features differing from a prior art reference in material, size or quantity, among other things, and where the technical effects are not disclosed, will not be deemed to contribute to the invention.
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