Patent Warning Before a Turkey Product Launch: Non-Infringement Actions Under Article 154
A patent warning does not itself establish infringement, and a foreign manufacturer does not have to start selling in Turkey before examining judicial protection. Article 154 of Turkish Industrial Property Code No. 6769 provides a route for an interested person to seek a declaration that identified commercial or industrial activity in Turkey does not infringe an industrial property right. The provision covers activity already undertaken, planned activity and serious, actual preparations. It also contains an important restriction: a person against whom an infringement action has already been brought cannot bring this non-infringement action.
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This guide addresses a specific cross-border problem: an overseas manufacturer, importer or distributor receives a Turkish patent warning while preparing a product launch. It explains the statutory route, the technical evidence needed and the distinction between non-infringement, patent invalidity and permission under a licence. It does not treat a warning letter as a court order or a patent registration as proof that every competing product is prohibited.
Identify the Turkish right before answering the warning
Obtain the patent or application number, registered proprietor, relevant priority and filing dates, current claims and procedural status. A patent family can contain applications and granted rights in several jurisdictions. A document describing a United States, German or other foreign right is not a substitute for identifying the right asserted in Turkey. The warning should be matched to the actual Turkish protection relied on and to the particular products or processes challenged.
The comparison must use the relevant claim version. Article 89 of Code No. 6769 regulates the scope of protection, including the relationship between published application claims and the claims as granted or subsequently amended. An old brochure or an early application printout can therefore be an unreliable basis for a launch decision. Preserve the date of each register extract and the source of every claim document.
Check who sent the notice and the capacity in which that person acts. The registered proprietor, an exclusive licensee, a non-exclusive licensee and a distributor do not have identical positions. Article 158 regulates a licensee’s right to sue. A distributor’s commercial relationship with a manufacturer does not, without more, establish ownership of the patent or authority to make every demand contained in a warning.
The commercial activity also needs an exact description. Manufacturing abroad, importing into Turkey, offering products for sale in Turkey and using a patented process are different acts. Article 85 identifies acts within the patent owner’s exclusionary rights, while Article 141 addresses infringement. Prepare a transaction map showing the manufacturer, exporter, importer, distributor, warehouse operator and intended customer activity instead of answering only at group-company level.
Article 154 protects an identifiable interest, not an abstract question
Article 154 is framed around a person with an interest in establishing whether their Turkish commercial or industrial activity infringes. The activity need not already generate sales. The statute expressly includes activity to be undertaken and serious, actual preparations for that purpose. A product launch can therefore require assessment before the first import shipment or customer delivery.
The practical task is to make that interest and the intended activity identifiable. Finalised product specifications, purchase commitments, distribution arrangements, import planning and a warning identifying the product provide different parts of the factual record. This is a recommended evidence structure, not a statutory checklist making every document compulsory. The petition must explain the actual commercial situation rather than ask the court to clear an unlimited range of unidentified future products.
Specify the product version and intended use. A declaration concerning one technical configuration should not be presented internally as permission for later engineering changes. The same discipline applies to processes: the steps, materials and operating conditions examined must correspond to the process intended for Turkey-related manufacture or supply. Maintain version control so that the technical report, pleadings and commercial release documents describe the same subject.
Is a warning or a preliminary request compulsory?
No. Article 154 expressly states that notification to the right holder is not a condition for bringing the action. The provision nevertheless describes an optional correspondence route: the interested person may request the right holder’s views; if no answer is received within one month after service, or the answer is not accepted by the interested person, a non-infringement action may be brought. Those sentences must be read together. They do not impose a universal one-month waiting period on every claimant.
Where the optional request is used, the service date, technical information supplied and precise response should be preserved. A request that simply asks whether the sender can trade in Turkey may fail to resolve the actual disagreement because it does not identify the product or patent claims. Conversely, sending uncontrolled production drawings can disclose commercially sensitive information without improving the legal analysis. The content and disclosure channel require deliberate preparation.
Silence is not a licence. The one-month rule in Article 154 concerns the statutory route to a declaration; it does not say that an unanswered request grants consent to use the invention. Do not convert a lack of response into a contractual permission, settlement or admission. Equally, disagreement with the reply does not establish that the patent is invalid or that the product falls outside its claims.
An existing infringement action changes the available procedural route
The final sentence of Article 154(1) prevents a person already sued for infringement from bringing this non-infringement action. For that reason, check the litigation position before filing rather than relying only on the date a warning reached a commercial manager. The relevant question is whether an infringement action has been brought against the proposed claimant, not merely whether a private letter has been sent.
A warning letter and an infringement lawsuit must not be conflated. A private deadline in a demand letter is also different from a procedural deadline in a served court document. If proceedings exist, the response must be organised in that case, including any available objections, substantive defences and properly framed invalidity relief. Article 154 does not remove the defendant’s ability to contest infringement; it restricts this separate declaratory route.
In a corporate group, identify the legal person named in the warning and in any court papers. Parent company, manufacturing subsidiary and Turkish importer are not interchangeable labels. An action by an unrelated group entity cannot be assumed to resolve a case against the actual importer. The structure must follow each entity’s acts, legal interest and procedural position, rather than an attempt to avoid the statutory restriction by changing the company named on the petition.
Article 89 requires a claim-based technical comparison
The scope of protection is determined by the patent claims, with the description and drawings used in interpreting them. Article 89 does not permit a conclusion based solely on visual resemblance, the patent’s title or the fact that both products solve the same commercial problem. A useful technical analysis identifies each relevant claim and compares its features with the actual product or process.
The statute also rejects two extremes. Claims are not confined to a purely literal reading of individual words, but they cannot be expanded to encompass features merely contemplated by the inventor and not claimed. Article 89(3) requires interpretation that gives the proprietor appropriate protection while providing third parties reasonable certainty about the scope. This is why a claim chart is more useful than a general statement that the products look different.
Article 89(5) requires consideration of equivalent elements at the time infringement is alleged. It describes equivalence by reference to substantially the same function, performed in the same way, with the same result. Changing a component’s name or adding an extra feature therefore does not, by itself, establish non-infringement. The analysis must explain the technical significance of the difference and address the statutory equivalence test.
Statements made by the applicant or proprietor during grant proceedings or the patent’s validity are relevant under Article 89(6). Obtain the prosecution and amendment record where it bears on the disputed interpretation. A foreign legal opinion may provide useful technical background, but it should not be treated as a Turkish court determination or assumed to address the Turkish claim version and applicable statutory tests.
| File component | Question it should answer |
|---|---|
| Current patent claims and status | Which Turkish right and which claim version are asserted? |
| Product or process specification | What exactly will be manufactured, imported, offered or used? |
| Claim-by-claim comparison | Which claimed elements are present, absent or disputed? |
| Equivalence analysis | Does a technical difference also address Article 89(5)? |
| Notice and litigation chronology | What was requested, when was it served and has an infringement action been brought? |
Non-infringement is different from invalidity and a licence
A non-infringement action asks whether the identified acts infringe the asserted right. An invalidity action challenges the legal basis for the patent itself. Article 154(3) permits the non-infringement action to be brought together with an invalidity action, but the grounds and evidence remain distinct. Evidence that a product omits a claimed feature is not the same as evidence that the patent lacks novelty or contains impermissibly added subject matter.
Article 138 lists patent-invalidity grounds and contains restrictions concerning entitlement, partial invalidity and the stage at which certain grounds can be decided. Our Turkish-language patent invalidity petition guide addresses that separate remedy. A combined claim requires separate explanation of why the activity is outside the patent and why the patent is alleged to be invalid; one should not be left as an unsupported slogan.
A licence provides permission under an agreement, within its agreed scope and applicable statutory rules. It is neither a judicial declaration nor a decision cancelling the patent. Territorial scope, permitted products, sublicensing and the identity of the licensee must be checked before treating an overseas manufacturing licence as permission for the Turkish importer. The guide to the law governing international IP licences explains the separate conflict-of-laws question.
Owning a later patent is not an automatic defence. Article 155 prevents the holder of a patent, trademark or design from relying on that later right as a defence to an infringement action brought by an earlier-priority or earlier-filing right holder. A patent on an improvement therefore does not, by itself, establish freedom to use the earlier protected technology. Commercial teams must keep patentability and freedom to operate separate.
The court, registered parties and publication stage matter
Article 156 identifies the specialist intellectual and industrial property courts and regulates territorial jurisdiction. In an action brought by a third party against the right holder, Article 156(5) starts with the defendant’s domicile. Where the applicant or proprietor has no domicile in Turkey, it refers to the registered representative and fallback rule in Article 156(4). An overseas claimant should not assume that its own lawyer’s office or the intended port of import automatically determines the court for this action.
Article 154(2) requires service of the action on all right holders recorded in the register. Obtain a current register record rather than using only the proprietor information printed on an old patent certificate. Ownership transfers and recorded rights need to be reflected accurately in the procedural file. The identity of the defendant and the persons who must receive service are questions to resolve before issuing proceedings.
Article 154(4) also restricts a merits decision before the publications specified in Article 99(3) or (7), and, for utility models, Article 143(10) or (12). A pending application, a granted patent under post-grant procedures and a utility model cannot simply be treated as procedurally identical. Record the relevant Bulletin publication and procedural status, not merely an application filing date.
Office representation and court representation should also be distinguished. Article 160 regulates persons authorised to act before TÜRKPATENT and requires representation by a registered trademark or patent attorney for persons domiciled abroad in the relevant Office proceedings. A Turkish litigation lawyer’s role is not automatically the same professional capacity as a registered patent attorney. Technical patent work and litigation work must be allocated to appropriately authorised professionals.
Filing the action is not an automatic permission to launch
Article 154 does not provide that filing a declaration action suspends the patent, prevents enforcement or authorises imports. Article 159 separately regulates interim measures intended to preserve the effectiveness of a judgment where the statutory conditions are established. A launch decision therefore needs to distinguish the existence of a pending action from any actual interim order and from a final determination of the dispute.
Preserve samples, technical drawings, manufacturing records and correspondence through lawful channels. A dated sample should be linked to the product version described in the case; a photograph without a clear model reference may not identify the relevant technical configuration. Do not alter existing records to match a later redesign. Keep the original product history and document subsequent changes separately so that the chronology remains reliable.
The commercial file should also record orders already accepted, shipment dates, contractual notice provisions and who has authority to agree a standstill or settlement. Those documents help assess commercial exposure, but they do not replace the patent analysis. Avoid promising distributors that the lawsuit guarantees clearance, and avoid treating a patent warning as proof of wrongdoing before the right, claims and acts have been examined.
The result should be a defined decision file: the right asserted, the specific activity, the claim comparison, the procedural route and the measures actually obtained. A declaration about one patent and one product configuration is not clearance of all trademarks, designs, regulatory requirements or other patents. For a separate brand-clearance exercise, see our Turkish trademark search guide; it addresses a different right and should not be substituted for patent analysis.
Frequently asked questions
Can a foreign manufacturer act before its first Turkish sale?
Article 154 covers planned Turkish commercial or industrial activity and serious, actual preparations, as well as existing activity. The claimant must identify its interest and the activity for which a declaration is sought.
Must the patent owner receive a notice before the action?
No. Article 154 expressly says prior notification is not a condition for bringing the action. It separately describes an optional request for the owner’s views and the response procedure.
Does one month of silence authorise use of the patent?
No. The one-month provision concerns the optional correspondence route to a declaration. It does not turn silence into a licence or consent to import, manufacture or sell.
Can a defendant in an existing infringement action bring this separate action?
Article 154(1) expressly prevents a person against whom an infringement action has already been brought from bringing this non-infringement action. The existing proceedings require their own defence strategy.
Is a warning letter the same as an infringement lawsuit?
No. A private demand and a court proceeding are distinct. Check actual court records and service documents rather than assuming the wording of a letter establishes that litigation has begun.
Does a visibly different product avoid patent infringement?
Appearance alone does not answer the question. Article 89 requires interpretation of the claims and consideration of equivalent elements. The technical comparison must address the asserted claim features.
Can non-infringement and invalidity be requested together?
Yes. Article 154(3) permits the actions to be combined. Each remedy still requires its own legal grounds, evidence and consideration of applicable procedural restrictions.
Does our own later patent provide a defence?
Not by itself. Article 155 prevents reliance on a later patent, trademark or design as a defence against the specified earlier right holder’s infringement action.
Must every registered right holder receive the action?
Article 154(2) requires service on all right holders recorded in the register. A current register extract is therefore an important part of preparing the case.
Does filing stop the patent owner from seeking interim measures?
Article 154 provides no automatic suspension or launch permission. Interim measures are a separate issue under Article 159 and the applicable procedural rules.
Official sources and scope
The governing source is Industrial Property Code No. 6769, particularly Articles 85, 89, 138, 141 and 154–160. The TÜRKPATENT legislation directory links the legislation and implementing rules. The Turkish Parliament’s enacted text records the original statutory wording; amendments must be checked in the consolidated law. This English explanation is not an official translation and does not replace the Turkish text or an assessment of a particular patent.
Discuss a Turkey-related patent warning
State the patent number, your company’s role, the proposed Turkish activity and whether court papers have been received. Do not send confidential production drawings or trade secrets through the initial form; agree a secure document channel first.
Istanbul and Mersin offices
Bakırcı & Keskin Law Office is Mersin-based and works throughout Türkiye with an Istanbul and Mersin focus. Court representation and any required registered patent-attorney work are distinct professional roles.
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