Patent litigation and technical expertise problem of Judges in Turkey

PATENT LITIGATION AND TECHNICAL EXPERTISE PROBLEM OF JUDGES IN TURKEY

I believe the notion of Patent has an individual technical value and dynamic within Intellectual Property Law. I can say that I have remarkably evaluated within my professional experience that a patent dispute has caused us- the mortal lawyers-many challenges because of the scientific data and terminology it incorporates, when compared to trademarks, designs or copyrights.

We do not have any justification not to be concerned when a patent dispute first pops out generally from an e-mail. Yet, we are indeed lawyers, there are doubtlessly many of us who are also patent attorneys or had their master’s degree in patents, however patent is the topic of the whole science world, rather than a sole discipline. This certainly brings along its surprises together with the dispute.

What can a mining machine that rotates 360 degrees and a formula of medication have in common?

Or a machinery sterilizing the cotton picked from the nature within a few seconds thanks to its multi-sensor system and a mechanism measuring the fuel oil calibration?

There is no doubt that all these are within the notion of patent. But, apart from the legal knowledge, examining the dispute also requires engineering, medicine, agriculture, or chemistry knowledge at a minimum as well, to understand whether the examples specified above exceed the inventive steps.

That is why, a practical problem which the lawyers hardly confess is that a patent dispute is extremely hard to understand especially when it first emerges, for an analyst or lawyer whose academic infrastructure is based on the juridical science.

Let’s admit, it would be insufficient to only know the Intellectual Property Law to answer the question: “Is this an infringement or equivalent practice when a machinery cleans a cotton picked from the nature via a conical duct system, whereas another spinning machine does this via a spiral (turbinal) duct system?” The argument is technical because it gets too little share from the juridical science. This is indeed engineering.

Therefore, it can be said that the subject who is first consulted to, namely the lawyer, for the solution of the problem the root of which is engineering, but the presentation authority is the lawyers, has a critical paradox: to ask what the solution of the problem is, to those who conveyed the problem to a lawyer.

Nevertheless, technical support received from the clients can overcome this problem in the practice. Technical support offered during reviewing the dispute can be objectified by the transfer of the matter, which is generally on engineering level, to the lawyers. Then, it is necessary to write out the dispute, which has scientific roots, with a legal parlance and to inform the Authority which will issue a verdict in relation to the dispute.

A serious and fundamental problem occurs here.

It is a larger problem than the understanding and comprehending the patent dispute relating to engineering, chemistry, medicine, or natural sciences by the relevant lawyers in the Turkish law practice.

The competence of decision makers!

COMPETENCE OF THE JUDGES IN PATENT DISPUTES

I do not know the equivalent cases and I am not very competent on the solutions in different judicial systems, however the most vital part of a patent dispute in Turkish Intellectual Property Law is the Judges’ position.

Civil Court for Intellectual and Industrial Property Rights that was established as a single Court in Istanbul in the first half of 2000s has increased in number at big cities in the course of time.

The purpose in the beginning was to create a sort of “Private Court” status by appointing specifically-trained and experienced Judges with excellent level of foreign language to such Courts for Intellectual and Industrial Rights and accordingly to monitor only the “intellectual property rights” within the body of this private structure (disputes resulting from trademarks, designs, patents, geographical signs, copyrights and software, if necessary).

However, just like in every practice, inconsistencies arouse here as well, in forming the decision makers, namely the Judges.

The Courts that were established in Istanbul and Ankara in the beginning operated with a single judge. After a while, this system has turned into a panel of three Judges (only the Commercial Courts and Assize Courts operate with three Judges in Turkey, and they issue verdicts by majority of votes. All other Courts have a single Judge).

The legislator has abandoned this practice after a while and adopted the system of single judge again.

Real problem was experienced in the cities other than Istanbul, Ankara and Izmir. These private Courts were not established in other regions, and therefore a lawsuit in the province of Denizli (is amongst the top largest textile potentials in Turkey) was being monitored by the Judge of an ordinary First Instance Court, operating with a single Judge.

This eventually caused serious hesitations in the practice. Yet, it is not quite easy for a Judge who monitored a divorce suit in the morning, to review the “inventive step” in the afternoon.

In short, the system had difficulties to find Judges who are well-trained in patent field, which has a broad spectrum and an unlimited practice area. That is because the patent dispute does not necessarily have to occur in Istanbul.

Pursuant to Turkish Procedural Law, the local Court in the place the dispute occurred had the capacity to monitor the case. For this reason, Judges specially trained on IP Law remained inadequate in numbers in the beginning. Nevertheless, they should be given credit for their efforts, many decisions of precedential nature within the body of this structure established after the start of millennium in Turkey were issued boldly by these Judges and many disputes today are resolved basing on the precedent decisions issued back then.

However, this paradoxical problem remains as an unsolved fact today.

It is not easy to detect in Turkey whether a machinery infringes the patent of another invention.

It is beyond dispute that this has difficulties also for USA or any European country because of the scientific nature and details incorporated, a patent dispute is a challenging process requiring high level of technical knowledge in every country.

However, it is against the reality in Turkey to expect problem to be solved by the decision makers with the academic infrastructure basing on only the Juridical Science.

For all these reasons, an interim solution attained a place in the course of time:

Expertness !

EXPERTS’ IMPACT ON PATENT DISPUTES AND THEIR POSITION IN DECISION MECHANISM

The term expertness has a deep-rooted history in the Turkish law.

In practice, experts serve as a support unit, assisting Judges to issue a decision and providing them preliminary opinion in the technical issues where Judges’ expertness remains inadequate (from estimation of receivables in commercial law, to the detective fraction in shipwrecks).

The cardinal rule is that the experts do not comment in legal terms. To clarify, the duty of an expert is to assist in the dispute resolution with its knowledge and to ensure a transfer of information limited to only its expertness.

This position of an expert is more specific in the Patent Litigation, compared to other litigation types.

Likewise, the contribution of “jurisprudence” is high within the examination dynamics in an ordinary trademark dispute, whereas this equilibrium is low in patent disputes, the main factor affecting the decision is the scientific or technologic detection in patent disputes.

For this reason, an expert is the auxiliary evaluation tool in a trademark or design dispute. This ratio increases in support of the expert in patent disputes. The opinion of expert is almost the most powerful evidence in patent disputes, pursuant to the Turkish Law.

Thus, in the litigations pertaining to the similar trademarks, experts submit to the file as a data the recognition and reputation and prior use of a trademark or trademarks within the sector, together with the powerful marks and actors of the sector and Judgment seat then can refine this data with their own legal knowledge. This differs in Patent Litigation as the Judges’ area of examination happens to be much narrower.

In practice, Judge mostly serves as an authority approving and accepting the technical assertions of experts.

For instance, when an expert sets forth technical explanations about the technology of a machinery, the Judge cannot refuse these on the basis of its legal knowledge. If the Judge has hesitations, the sole solution is to receive a different and second opinion.

An expertise report submitted to the file in a patent litigation between two parties will always cause one party to be unsatisfied, as might be expected.

This would naturally require the re-examination of a report presented to the file, which mostly includes numerous data, drawing, explanations, and formulas with engineering terminology.

It would unfortunately be unrealistic to expect the Judge to conclude with the professional experience and data.

Because the patent disputes are not the type of disputes which generally have a repeating routine with many precedent decisions in the past. As we all know, technology is advancing with an extraordinary speed, the patentability forms an extremely serious volume even solely in the pharmaceutical industry.

In a nutshell, the Judgment seat, which is the most fundamental decision maker subject of a litigation in Turkish Law practice, is an authority in need of and abundantly receiving technical support.

However, a lawyer’s lack scientific data in a patent case can be overcome via various support channels. Besides, the responsibility taken by an attorney in litigation is important, but this is directed only to the client. In fact, the responsibility of a Judge covers a broad field directed to the parties and public, and sometimes to the history, under the verdict to be issued.

Briefly, the Judge in charge of Patent Litigation has a huge problem.

Judge serves as a decision maker authority. Parties expect decision from the Judge, which can be a ruling case for future litigations.

SOURCE OF EXPERT IN PATENT DISPUTES

We can say that a Patent Litigation appears as an enormous magical box in the beginning. As a small problem, we do not know what will pop out of such box, indeed the process of litigation itself is nothing more than understanding what is inside the box.

Unlike any other litigation types, the first phase in a patent dispute focuses on the capability of defining the dispute itself, which is a challenging process independently for the lawyers who are lack of natural sciences infrastructure.

A three-dimensional printing technique that can be applied on textile products thanks to a virtual reality technology used for military, medical or entertainment purposes, or the systems preventing bird strikes to an aircraft engine through sound waves doubtlessly bears the utterly different branches of technology.

Imagine that there are parties that should participate in chess party, however the principles of motion for chess pieces remain uncertain until the party starts. Principles change in every party (every patent case), different pieces and novelty come with black and white squares of various numbers.

At this stage, the three main subjects of the litigation, (the defendant, plaintiff, and the Judge) should first identify the case. I may be wrong, but as a lawyer frequently involved in different types of litigation, this main endeavor makes me consider the Patent Cases as the most challenging actions.

Returning to the beginning, we should also question the expertness as a human resource in this case.

Yet, especially in the Turkish Law, expertness is a duty based on voluntariness, except from certain public enterprises assumed by law. This corresponds to a highly remarkable problem in Patent Litigations.

How can we find the top-level expert human resource in such field falling into almost every branch of science at the micro level?

UNIVERSITIES, CHAMBERS OF INDUSTRY AND R&D INSTITUTIONS

The first thing that comes into mind is always the resource of universities and which is a rightful point of view. Hence, the case in an ordinary patent dispute in Turkey is generally forwarded to academician of the relevant discipline in one of the universities with the highest reputation.

However, this solution has difficulties in itself.

The first one is that expertness is a voluntary act, as identified above. Academicians have a very limited source of time to allocate for a patent dispute that will take up time, particularly because of their heavy class schedules, conferences, and personal occupational calendars.

Given that the expertise fees set by the Courts are not satisfactory (expertise salaries are appointed by the State in Turkish Law), it can be said that the academician resource would not be much productive.

As an effective solution coming to mind is to organize specialization commissions for the cases requiring scientific detections, so that only the semi-scientific departments or the said purpose can provide such resource.

To eventualize, chambers of industry can create an expert pool on sectoral basis (such as textile engineer, mechanical engineer, chemist, or biologist) and fill this deficiency as a support unit.

However, in order to do so, there is an obligation to create unlimited expert resource in an almost unlimited field.

Because, Turkey has a great growing acceleration especially in patent applications, according to the official statements of the Ministry of Industry published close of the year 2019 just before Covid:

“International patent applications filed in Turkey have 47% increases. This increase results from the new inventions in the fields of high-tech such as machinery, medicine, chemistry, computer and electric-electronic. Thus, Turkey has ranked as the 13th worldwide for the first time, surpassing the countries like India, Israel, Australia and Finland”.1

This acceleration is doubtlessly the same in every corner of the world. While the science and technology develop in parallel with each other, the legal infrastructure naturally tags behind.

Patent applications which were nearly between 700 and 900 during 1990s in Turkey, have increased to 10.000 and above annually after 2010s.

The local applications which were few in number when compared to foreign applications (for example 7,6 % in 1995) in the past, first became equal to the number of foreign applications today, the number of local patent applications presently is either equal to or more than the number of foreign applications2.

Increase of local patent applications in numbers is doubtlessly a significant and valuable contribution countrywide and even on a global scale. Nevertheless, when commercial or industrial development is supported by science, the legal disputes also increase in volume.

In this sense, increase of patent applications categorically in any country is a favorable development, but the natural and expected consequence of this is the increasing number of patent litigations. This is the reality.

AS AN OPTION, A RIGHT TO OBTAIN “EXCLUSIVE EXPERT REPORT” PRIOR TO LITIGATION

There is an explicit risk that the judicature, patent attorneyship or attorneyship formation would remain incapable against science and technology with an unlimited content, especially against the “patent” disputes with an extremely broad spectrum.

Actors to fill this gap should be the universities, academic staff, R&D Institutions that have quite inadequate function in Turkey, as well as the official or private institutions. Expertness is unfortunately likely to be insufficient for a patent litigation in Turkish Law.

Nevertheless, these discussions may seem extremely theoretical for a patent owner who established a remarkable investment, effort, labor and scientific research and development.

There are two results expected from the litigation: Being fair and rapid.

A practical solution to make this process fair and rapid for the clients can be conducting an exclusive expert examination as a sort of shortcut prior to launching the litigation.

This alternative actually relates to exercising the option of official expertise prior to the litigation, which indeed is within the processes of litigation identified above.

Turkish Law practice allows for obtaining an examination report from an expert scientist, academician, or researcher, about the main elements of the dispute, prior to the litigation.

This report has a nature of a preliminary evidence when submitted to the Court at the phase of lawsuit. Doubtlessly, the Judge is not bound by this, if the report supports the claims of the plaintiff, other party can object as well.

On the other hand, it has following advantages for a start:

  • The expertise report obtained prior to the litigation may not detect a patent dispute or infringement. In such case, option of not filing a lawsuit can be considered. Within this frame, this exclusive report may ensure non-filing of a lawsuit that can take long years and might be resulted unfavorably and help client to plan a different and realistic strategy.
  • This report may assist the right holder to prepare to the case in a more equipped way.
  • A strong proof reference can be created in the beginning of the litigation.

As mentioned above, a preliminary report obtained prior to a Patent Litigation never guarantees winning a lawsuit. In this respect, it is strongly recommended to obtain such exclusive report objectively, without any referrals.

Along with the aforesaid, a report to be obtained from a highly reputable academic institution, a relevant scientific institution or academician can be a guide to the litigation subjects, within a lawful methodology.

In all cases, local dynamics of law have a vital place in a patent dispute. Therefore, it would be useful to consult your intellectual property attorneys on a local scale.

As a result, Patent Litigation is a challenging but an informative process.

While we have utmost respect for every field of law, Patent Litigation may be the hardest field of litigation, because of the challenges it brings along.

However, in a world full of papers, folders and files, it is perhaps the field which pulls us over most to the natural sciences, technology, and in short to life.

Law is more than just sheets of hardcopies in the forms of report, files, and folders.

We may run into a robotic machinery or wind tunnel as well.

Footnotes

1. 16.10.2020, Announcement of the Minister of Industry (https://www.turkpatent.gov.tr/TURKPATENT/allNews/newsDetail?newsId=1319).

2. Statistical data on yearly basis is accessible on the website of the official body, Turkish Patent and Trademark Office: https://www.turkpatent.gov.tr/TURKPATENT/statistics/