NO CONTRIBUTION TO THE INVENTION, NO UTILITY MODEL PROTECTION

20.05.2021Bahadır Gürsoy

The Utility Model protection has been available for some 25 years in the Turkish practice. With the exclusion of inventions based on methods/processes and chemical/biological substances, the Utility Model protection may still be an attractive option for those having a technical solution being somehow obvious over the available prior art.

With effect from the enactment of the Turkish Industrial Property Law, January 2017, the Lawmaker introduced two substantial requirements, which were not available in the abolished legislation, being the mandatory novelty Search proceedings and the claim content. In particular, features not contributing to the invention are not taken into consideration for the assessment of novelty.

To be registerable, a Utility Model application is required to be novel and industrially applicable. The accessible prior information for the assessment of novelty covers the globe, i.e. novelty is applicable in an absolute sense. With this being said, it is the application of novelty assessment that appears to be wide apart in that if a claim feature does not contribute to the invention, it is excluded from the assessment of novelty.

The relevant article (Art. 142(2)) states that “…technical features not contributing to the subject matter of the invention are not taken into consideration for the assessment of novelty…”. This wording appears to invoke that not only non-technical features but also features -despite being technical- not having a technical effect on the solution of the technical problem of the invention are excluded from the assessment of novelty.

On a scale from novelty to inventive step, it is clear that the assessment of novelty for Turkish Utility Model applications resides somewhere above a standard novelty assessment, i.e. the photographic identicality test prevailing in several jurisdictions such as the European Patent Office for patent applications.

Neither the Turkish Patent Office nor does the Case Law appears to set a test with a view to identifying whether a claim feature contributes to the invention. It is worth noting that the inventive step, in a classical sense, is not a requirement to have a Utility Model protection in this practice. However, to what extent a technical claim feature may (or may not) support its contribution to the invention remains to be developed for a consistent implementation, which should not go to a level serving to identify obviousness.

It goes without saying that applicants should be confident when drafting applications to provide sufficient technical background for the effect of features in independent and dependent claims. Typically, claim features differing from a prior art reference in material, size, quantity, etc., and which are not supported by the disclosure in their technical effects would not be deemed to contribute to the invention.

If you wish to know more about these updates or would like further advice, please contact Stock.


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