Conflicting Court of Cassation Decisions on EP Validations: Is Re-establishment of Rights Truly Excluded in Turkey?

European patents granted by the European Patent Office (EPO) must be validated in Turkey through the filing of a Turkish translation of the patent specification. Under Turkish law, implementing Article 65 of the European Patent Convention (EPC), this translation must be filed within three months from the mention of the grant of the European patent in the European Patent Bulletin (B1 document). The key issue is whether re-establishment of rights is available in Turkey, where this validation time limit has been missed.

The Administrative Position: A Categorical Refusal

The Turkish Patent and Trademark Office (TPTO) rejects requests for re-establishment of rights in EP validation cases without examining whether the applicant exercised all due care. Its position is based primarily on Article 12 of the Regulation on the Implementation of the EPC in Turkey.

Article 12 (last paragraph) reads as follows:

“If the Turkish translation is not filed with the Office within the prescribed period, or if the required fee is not paid, the European patent shall be deemed void ab initio in Turkey.”

According to the TPTO’s interpretation, failure to validate within the deadline prevents the European patent from ever acquiring national status. Consequently, no right is deemed to have arisen in Turkey, and therefore no right can be “re-established”.

An Earlier Final Decision of the Court of Cassation: Recognition of Re-establishment

In its decision dated 20 November 2023 (11th Civil Chamber, E. 2022/2917, K. 2023/6627), the Court of Cassation upheld a judgment annulling the TPTO’s refusal, and accepted that re-establishment of rights is available for EP validations.

Notably, the Court did not treat Article 12 of the Implementation Regulation as determinative. Instead, its reasoning is directly based on Article 107 of the Industrial Property Code No. 6769 (IP Code), a statutory provision, and concluded that re-establishment of rights was available for EP validations. This decision became final.

The Recent Reversal Decision

In its decision dated 17 March 2025 (11th Civil Chamber, E. 2024/2156, K. 2025/1875), the Court of Cassation adopted a different approach. The Court overturned the lower court’s judgment and endorsed the view that re-establishment of rights is not available for EP validations, relying on EPC Article 122 (6) and Article 12 of the Implementation Regulation.

The decision is a reversal (bozma), meaning the lower court may either comply with or resist the Court of Cassation’s reasoning. To our knowledge, the decision has not yet become final.

Does Regulation Article 12 Really Exclude Re-establishment?

EPC Article 122(6) is generally understood as allowing Contracting States to regulate the re-establishment of rights. The TPTO and the Court of Cassation, in its recent reversal decision, consider that Turkey has exercised this discretion through Article 12 of the Implementation Regulation.

Even assuming that EPC Article 122(6) permits national discretion in this area, the decisive question remains whether Article 12 of the Implementation Regulation clearly and explicitly excludes re-establishment of rights.

Article 12 states that if the translation is not filed in due time, the European patent shall be deemed void ab initio in Turkey. However, the provision contains no express statement that re-establishment of rights shall not be available. No explicit prohibition is articulated.

By contrast, Article 7 of the same Regulation (mirroring EPC Article 66) provides that a European patent application designating Turkey shall, from its filing date (and where applicable its priority date), be treated as equivalent to a national Turkish patent application.

In light of Article 7, and without the limiting function performed by Article 12, a European patent designating Turkey could theoretically retain the status of a national application from its filing date without any temporal limitation, irrespective of whether the applicant ultimately intends to validate the patent in Turkey.

An alternative reading of Article 12 is therefore possible. The provision may have been primarily intended to prevent indefinite pendency and the continued legal effect of an unvalidated European patent in Turkey. In other words, it is at least arguable that Article 12 was not designed to exclude the possibility of re-establishment in EP validation cases.

This systemic reading is also reflected in administrative practice. In the TPTO records, the validation filing date is treated merely as a document receipt date. The relevant filing date for substantive purposes remains the original European patent application filing date before the EPO. Similarly, for post-grant obligations such as the submission of statements of use, the calculation is based on the European filing date rather than the Turkish validation date. In practice, validation functions as a procedural step rather than the creation of a new national filing.

Re-establishment of rights is designed precisely to remedy the legal consequences of missing a time limit where due care has been exercised. Interpreting Article 12 as eliminating that remedy, despite the absence of explicit wording, leads to a particularly severe result.

Moreover, Article 107 of the IP Code, which governs the re-establishment of rights, is framed in broad terms and contains no limitation excluding EP validations. The legislative rationale of Article 107 refers to the EPC system and reflects an intention of alignment rather than restriction.

In this context, excluding the re-establishment of rights for EP validations would arguably require a clear and explicit statutory basis. Introducing such a limitation through a secondary regulation, in the absence of an express provision in the IP Code, raises questions of normative hierarchy.

Against this background, reading Article 12 as a categorical exclusion of re-establishment appears to extend the provision beyond its wording. An alternative interpretation that Article 12 merely prevents indefinite pendency where validation is not pursued is at least equally plausible.

Concluding Observations

The current divergence in the case law of the Court of Cassation has revived an issue that directly affects legal certainty for patent proprietors.

Whether Article 12 truly excludes re-establishment of rights, or whether such exclusion is being inferred through interpretation rather than expressed in clear terms, remains a matter of serious debate. Given the systemic importance of the question, a harmonised position, potentially through a unification of judgment decisions, would contribute significantly to predictability and coherence in the Turkish patent system.

Abstract

The availability of re-establishment of rights for European patent (EP) validations in Turkey has become increasingly controversial following conflicting decisions of the Court of Cassation. While an earlier final decision recognised the applicability of re-establishment under Article 107 of the Industrial Property Code, a recent reversal relied on EPC Article 122(6) and Article 12 of the EPC Implementation Regulation to deny such possibility. This article examines whether Article 12 truly excludes re-establishment, arguing that its wording does not expressly provide such limitation and that an alternative, systemically coherent interpretation remains plausible.