Compulsory licensing in Turkey

  1.  What is the definition of compulsory licensing?
  2. What are the applicable sources of law relating to compulsory licensing?
  3. What type(s) of products or technologies do compulsory licensing applies to? 
  4. Who can apply for a compulsory licence? Are foreigners or foreign companies allowed to apply for a compulsory licence? 
  5. What are the legal grounds to grant a compulsory licence under the local laws of your jurisdiction and any applicable international treaties?
  6. Are there any preconditions to apply for a compulsory licence?
  7. Are there any limits on the number of compulsory licensees?
  8. Will there be any limitation on the scope of the compulsory licence, for example limitations on the time and the territory? 
  9. Which authority has the competency to grant a compulsory licence?
  10. What are the application procedures to get a compulsory licence?
  11. Can the competent authority grant a compulsory licence without hearings under an urgent situation?
  12. Can a compulsory licence be revoked/terminated or automatically revoked/terminated? 
  13. Does the compulsory licensee have to pay a royalty to the right holder? 
  14. Are there any legal remedies for the party who is not satisfied with the compulsory licensing decision of the competent authority?
  15. In order to implement the compulsory licence, for example, to manufacture the licenced product, is the right holder required to provide necessary support, such as know-how and training as in a voluntary agreed licence agreement? 
  16. Is the compulsory licensee subject to any confidentiality obligation? 
  17. Is the compulsory licensee allowed to export their products under the compulsory licence? 
  18. Have the laws on compulsory licensing been used in previous health emergencies and/or in the present COVID-19 pandemic in your jurisdiction?
  19. Is it possible for third parties to use the current laws on compulsory licensing in your jurisdiction to facilitate the treatment of patients infected by COVID-19?
  20. Are there any recent major regulatory exemptions and/or amendments made following COVID-19 to regulations governing compulsory licensing?
  21. Can a compulsory licence be transferred or assigned?
  22. Does the issuance of a compulsory licence have any impact on the previously agreed licence?
  23. Is there any special labelling requirement for the products made under the compulsory licence?
  24. Is there any special distribution channel requirement for the products made under the compulsory licence?
  25. Is there any price requirement for the products made under the compulsory licence?

1. What is the definition of compulsory licensing?

The Turkish Law No 6769 on Intellectual Property ("IP Law") does not contain a definition of compulsory licences. 

2. What are the applicable sources of law relating to compulsory licensing?

The applicable legal source for compulsory licensing is the IP Law.

3. What type(s) of products or technologies do compulsory licensing applies to? 

The IP Law has not listed any specific products or technologies to which compulsory licensing applies. 

3.1 Has any compulsory licence ever been issued in your jurisdiction? If yes, on what type of technology? 

According to the WIPO questionnaire on "Exceptions and Limitations to Patent Rights in Turkiye", a compulsory licence has been granted in the field of mechanical engineering for an anchor device, which can be fixed to the wall (IPC class: F16B13). The compulsory licence was granted on the basis of non-use.

4. Who can apply for a compulsory licence? Are foreigners or foreign companies allowed to apply for a compulsory licence? 

The only restriction laid down in the IP Law is that compulsory licences are granted mainly for the domestic market.

According to Article 129 of the IP Law, a compulsory licence may be granted under one of the conditions listed below:

  1. In case of non-use;
  2. In case of questions concerning the dependence of the patent;
  3. In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"), to which Turkiye has acceded if there is a public health problem with exported pharmaceutical products;
  4. In the public interest;
  5. Where a breeder cannot develop a new plant variety without infringing an earlier patent; and
  6. If the patent holder engages in anti-competitive activities during the use of the patent.

6. Are there any preconditions to apply for a compulsory licence?

Conditions for non-use: 

  1. According to Article 130 of the Intellectual Property Law, a compulsory licence can be applied for at the court if the patent holder has not used the patent within three years after publication of a grant decision in the Trademark/Patent Bulletin or within four years after the date of the patent application (whichever date expires later).
  2. In determining "use" (or lack thereof), the court will also take into account conditions beyond the control of the patentee, such as market conditions.
  3. Non-use also applies to situations in which a patent proprietor has repeatedly paused in the use of his patent for more than three years without justified reasons.

Conditions for questions relating to the dependence of the patent: 

  1. According to Article 131 of the Intellectual Property Law, the holder of the successor patent may apply for a compulsory licence for the successor patent if it is not possible to exploit a patented invention without infringing the rights of an earlier patent. When granting a compulsory licence, the court will examine whether the licence can bring significant technological and economic benefits. 
  2. If a compulsory licence is granted to the holder of the subsequent patent, the holder of the earlier patent may apply for a compulsory licence for the subsequent patent. 
  3. If one of the dependent patents becomes null and void or expires, the compulsory licence is also terminated. 

Public interest requirements under Article 132 of the IP Law:

  1.  If the use, dissemination or improvement of the patented invention is of crucial importance for public health or national security; 
  2. If the non-use/inadequate use of the patented invention causes serious technical or economic damage, whether qualitative or quantitative, the Council of Ministers may decide to grant a compulsory licence in the public interest; or 
  3. If the patented invention is vital for public health or national security, the competent ministry will seek the approval of the Ministry of Defence or the Ministry of Health.  

7. Are there any limits on the number of compulsory licensees?

As a rule, a compulsory licence is not exclusive. However, there are exceptions. Accordingly, a compulsory licence granted in the public interest may be exclusive. Furthermore, a compulsory licence granted for reasons of national security may be limited to use by one or more undertakings. 

8. Will there be any limitation on the scope of the compulsory licence, for example limitations on the time and the territory? 

As mentioned in question 4, compulsory licences are mainly granted for the domestic market. In addition, the import of the patented invention is in principle prohibited. Exceptionally, however, the patented invention may be imported if the compulsory licence has been granted in the public interest and the licensee has been granted an explicit authorisation for a limited need and period of time. 

9. Which authority has the competency to grant a compulsory licence?

As a rule, a compulsory licence is granted by the court. However, if a compulsory licence is requested because a patent holder engages in anti-competitive activities while using the patent, it is granted by the competition authority.

10. What are the application procedures to get a compulsory licence?

As a rule, compulsory licences are applied for before the court, with the exception of the exception described in question 9.

10.1 What materials need to be submitted to the competent authority?

According to Article 129(2) of the IP Law, the individual/entity applying for a compulsory licence should prove that he has not obtained a contractual licence within a reasonable period of time, despite having requested reasonable conditions from the patent holder. This does not apply in emergency situations or in the cases referred to in the TRIPS Agreement, where public-health issues relating to exported pharmaceutical products are involved, and in cases where a patent holder has carried out activities restricting competition during the use of the patent.

10.2 How long will it take to get a compulsory licence?

The competent court will decide within one month whether or not to grant a compulsory licence.

11. Can the competent authority grant a compulsory licence without hearings under an urgent situation?

The IP Law contains an emergency exception.

12. Can a compulsory licence be revoked/terminated or automatically revoked/terminated? 

A compulsory licence cannot be automatically revoked/terminated.

12.1 What are the conditions for the revocation/termination of a compulsory licence? 

The court may terminate the compulsory licence if the licensee seriously infringes his obligations under the compulsory licence or systematically fails to fulfil them. The court may also annul a compulsory licence if the conditions under which the compulsory licence was granted expire.

12.2 How should products made under a compulsory licence be treated if the compulsory licence is terminated/revoked?

This is not specified in the IP Law.

13. Does the compulsory licensee have to pay a royalty to the right holder? 

Yes, the compulsory licensee must pay a royalty to the right holder.

13.1 If the compulsory licensee is required to pay a royalty, how is the amount of royalty determined and who will decide the amount of the royalty?

The amount of the royalty is fixed by the authorised court taking into account the economic value of the patent, the duration of the compulsory licence and the field of use.

13.2 Is there any remuneration available for the right holders other than royalty?

The parties may agree on remuneration other than a licence fee. However, it must be in line with the provisions on compulsory licensing. 

Yes, since compulsory licences are granted by civil courts, there is a right of appeal.

15. In order to implement the compulsory licence, for example, to manufacture the licenced product, is the right holder required to provide necessary support, such as know-how and training as in a voluntary agreed licence agreement? 

This is not specified in the IP Law.

16. Is the compulsory licensee subject to any confidentiality obligation? 

This is not specified in the IP Law.

16.1 If the compulsory licensee discloses the confidential information in violation of its obligation, does the right holder have a basis of claim against the compulsory licensee? 

The IP Law only recognises a mutual relationship of trust between the licensor and the licensee.

17. Is the compulsory licensee allowed to export their products under the compulsory licence? 

The compulsory licensee is not allowed to export the patented invention. 

17.1 If the compulsory licensee is permitted to export products under the compulsory licence, are there any requirements and limitations on the export of such products?

If the compulsory licence has been granted in the public interest, the licensee may exceptionally be allowed to export for a limited period of time on the basis of the licence.

18. Have the laws on compulsory licensing been used in previous health emergencies and/or in the present COVID-19 pandemic in your jurisdiction?

No.

19. Is it possible for third parties to use the current laws on compulsory licensing in your jurisdiction to facilitate the treatment of patients infected by COVID-19?

The Ministry of Health may authorise a compulsory licence in the public interest where the use, dissemination or improvement of the patented invention is of crucial importance for public health. 

20. Are there any recent major regulatory exemptions and/or amendments made following COVID-19 to regulations governing compulsory licensing?

No.

21. Can a compulsory licence be transferred or assigned?

Compulsory licences can only be transferred as part of the transfer of an undertaking to which the licence is linked. If the compulsory licence is granted because of problems of dependency, the licence is transferred with the dependent patent.

22. Does the issuance of a compulsory licence have any impact on the previously agreed licence?

This is not specified in the IP Law.

23. Is there any special labelling requirement for the products made under the compulsory licence?

This is not specified in the IP Law.

24. Is there any special distribution channel requirement for the products made under the compulsory licence?

This is not specified in the IP Law.

25. Is there any price requirement for the products made under the compulsory licence?

This is not specified in the IP Law.

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