SECONDARY SUBSTANTIVE and PROCEDURAL ASPECTS
UNITY OF INVENTION REQUIREMENT IN TURKEY
A PRIORI UNITY OF INVENTION OPINION
As a substantive law requirement, considering unity of invention is defined under Art. 45, the Decree Law #551 and Art. 15 Reg. DL #551. The lack of unity opinion by the Turkish PTO at an early formal examination stage of the examination is of a priori nature, within the meaning of the EPC (EPO Examination Guidelines F.V.7).
UNITY OF INVENTION OPINION UNDER THE FORMALITIES EXAMINATION
When the Turkish PTO examines the application for compliance with the requirements of Art. 42 to Art. 52 DL #551, the unity of the invention is also examined even though it is not a formal issue.
As an application can relate to one invention or a group of inventions combined to create a general single invention (Art. 45 DL #551), when the application does not comply with requirements of Art. 45 DL #551, the applicant is then notified that the application should be restricted to one invention. Accordingly, the examination procedure is suspended at this stage and the applicant is given a three-month period to overcome the unity objection of the Turkish PTO.
A POSTERIORI EXAMINATION OF UNITY OF INVENTION
A posteriori examination of unity of invention may reveal that the common special technical feature in some of the claims has become part of the state of the art considering the cited prior art documents. However, although carried out under the formal examination of the Turkish PTO, a priori findings relating to lack of unity can also be communicated to the applicant as explained above.
DIVISIONAL APPLICATIONS IN TURKEY
DIVISIONAL APPLICATIONS FILED SUBSEQUENT TO FORMAL EXAMINATION
Simultaneously, the applicant can be notified that the application should be divided within six months from such notification date provided that the parent application is still pending on the date of filing the divisional applications.
The parent application is refused in the event that the lack of unity objection of the PTO is not remedied within the time limit of three months. The 6-month time limit’s second half can be used for filing a divisional application only if the unity objection is overcome in the first three months.
The applicant can file further divisional applications based on the parent application, on a voluntary basis at a later stage of the examination.
VOLUNTARY DIVISIONAL APPLICATIONS
A divisional patent application can be filed in Turkey either voluntarily or by a communication of the Turkish PTO specifying a time limit for filing a divisional application. The second case where the applicant needs to file a divisional application can occur at a very early stage of the prosecution, for instance during formal examination.
The applicant can file further divisional applications based on a pending parent application on a voluntary basis at a later stage of the prosecution.
SUBJECT MATTER OF VOLUNTARY DIVISIONAL APPLICATIONS
The subject matter of such voluntary divisional applications may not relate to the invention or group of inventions as defined in the above-mentionned 6-month time limit communication of the Turkish PTO.
Apart from the communication issued under formal examination for compliance with the requirements of Art. 42 to Art. 52 DL #551, no legal provision is in force in Turkey, specifying special periods for filing divisional applications.
According to the Paris Convention, the applicant can file a divisional application even if there is no objection as to lack of unity in the application. A divisional application may only be filed if the parent application is still pending. The parent application should not be refused, withdrawn or deemed to be withdrawn for whatever reason. The mention of the grant decision should not be published. A divisional application may be filed from another divisional application. The filing date of the parent application is assigned as the filing date of the divisional application.
REQUIREMENTS OF A TURKISH DIVISIONAL APPLICATION
On the filing date of the divisional application, a search request should be made and the search fee should be paid within three months at the latest.
COVERAGE OF THE SEARCH REPORT IN RESPECT OF THE PARENT APPLICATION
If the search report drafted for the parent application also covers the claims of the divisional application, the examination procedure continues with the substantive examination of the divisional application. The same procedure also applies to the examination procedure if the divisional was filed after the examination report in respect of the parent application was already drawn up and the examination report is also relevant to the claims of the divisional application.
NUMBER OF EXAMINATION REQUESTS
The situation above may have the consequence that the divisional application already consumes one of the examination report rights as defined in Art. 62 DL #551. It is noted that the examination procedure under Art. 62 DL #551 specifies that the applicant can request up to three examination reports. The second and the third examination reports should be regarded as regular official communications within the meaning of Art. 94(3) EPC, subsequent to the main eamination report.
ANNUAL FEES FOR DIVISIONAL APPLICATION
The annual fees that are due for the parent application on filing the divisional application should also be paid for the divisional application at the time of filing the same.