1- WHAT IS PATENT AND TRADEMARK ATTORNEYSHIP, AND WHO IS CALLED AN ATTORNEY?
Patent and Trademark Attorneyship is a profession included in the tertiary sector and often practiced by experts who are authorized to conduct respective transactions (in the subjects of inventions, patents, utility models, designs, trade and service marks, geographical indications, traditional product names, integrated circuit topographies) on behalf of applicants before Turkish Patent and Trademark Office and who act as consultants and attorneys in the matter of protection of these rights.
Patent and Trademark Attorneys are the real individuals of this area of expertise. Attorney candidates are required to have attained a Bachelor's Degree from any college/university that provides a four-year higher education program, to pass two-stage ("General Proficiency Exam" and "Professional Competency Exam") Patent and Trademark Attorney Qualifying Exams of Turkish Patent and Trademark Office held every two years, and to be registered to the Register of Patent and Trademark Attorneys of Turkish Patent and Trademark Office.
2- WHAT ARE THE CONDITIONS FOR PARTICIPATING IN PATENT AND TRADEMARK ATTORNEY QUALIFYING EXAMS? WHEN ARE THE EXAMS HELD?
Candidates are required to meet the following conditions to be able to take the Patent and Trademark Attorney Qualifying Exam.
a) To be a citizen of the Republic of Turkey (Compulsory to be able to take the exam)
b) To possess the capacity to act (Compulsory to be able to take the exam)
c) To have graduated from one of the higher education institutions providing at least four-year undergraduate education or from one of the foreign higher education institutions that are recognized by competent authorities (Compulsory to be able to take the exam)
d) Not to be convicted of dishonorable offenses (Compulsory to be able to take the exam)
e) To occupy a residence in Turkey (Compulsory for registration)
f) To pass the Attorney Qualifying Exams held by the Turkish Patent and Trademark Office (Compulsory for registration)
g) To register to the Register of Patent and Trademark Attorneys of Turkish Patent and Trademark Office (Compulsory for registration)
Patent and Trademark Attorney Qualifying Exams are held in two stages every two years (every odd year). "General Proficiency Exam", which is the first stage of Attorney Qualifying Exams is usually held in October or November in odd years. The second stage of Attorney Qualifying Exams, i.e. "Professional Competency Exam", is usually held in January or February in even years.
Information regarding Qualifying Exams and Registration is provided on the website (www.turkpatent.gov.tr) of the Turkish Patent and Trademark Office.
3- WHAT ARE THE KEY ELEMENTS FOR EFFECTIVE PROTECTION OF INDUSTRIAL PROPERTY RIGHTS IN A COUNTRY?
The key elements required for ensuring effective protection of industrial property rights in a country may be listed as follows;
An effective and influential Public Institution
Legislation that consists of laws in compliance with international standards and international treaties,
Patent and Trademark Attorneys who duly gained legal status and subject to regular audits,
Specialized courts (Civil and Criminal Courts for Intellectual and Industrial Property)
Lacking or inadequacy in the functionality of any of these key elements may potentially result in disruption or even collapse of the industrial property system of a country.
Although the aforementioned key elements are being substantially implemented in Turkey today, the fact that patent and trademark attorneys are unable to assume an organized structure as practiced in bar associations is still a major shortcoming. The legislative regulations with respect to the discipline of attorneys are outlined in the Industrial Property Code numbered 6769.
4- WHAT ARE THE DUTIES OF PATENT AND TRADEMARK ATTORNEYS?
As applicants who desire to acquire rights for patents, utility models, trademarks, designs, geographical indications, traditional product names, and integrated circuit topographies may file their applications individually before the Turkish Patent and Trademark Office, they may also appoint and authorize a patent and/or trademark attorney, who is one of the main elements of the infrastructure of the industrial property system, to have respective transactions executed and to avoid any potential right losses. In concept, appointing a patent and trademark attorney is similar to the appointment of authorized customs brokers to have respective transactions conducted in customs, or to the appointment of lawyers by plaintiffs or defendants in courts.
Patent attorneys are individuals who are duly authorized to represent applicants before the Turkish Patent and Trademark Office in transactions carried out on the subjects of patents, utility models, designs, and integrated circuit topographies, to provide consulting services to applicants on these subjects, to take necessary steps, and to perform necessary operations in order to protect the industrial property rights of applicants.
Trademark attorneys, on the other hand, are individuals who are duly authorized to represent applicants before the Turkish Patent and Trademark Office in transactions conducted on the subjects of trademarks, geographical indications, traditional product names, and designs, to provide consulting services to applicants on said subjects, to take necessary steps, and to perform necessary operations in order to protect the industrial property rights of applicants.
Moreover, attorneys are responsible for the establishment and protection of the rights of respective persons before the Turkish Patent and Trademark Office, and for ensuring and maintaining all manner of relations with the management with respect to the establishment and protection of rights.
Although applicants residing in Turkey are not obliged to appoint an attorney, it is compulsory for foreigners who desire to file applications before the Turkish Patent and Trademark Office, to appoint and authorize attorneys. This obligation stems from the Paris Convention.
Powers and responsibilities affiliated to both the legislation enacted for patent and trademark attorneys in Turkey and the legal status introduced in this regard refer to filtering applications and oppositions filed before the Turkish Patent and Trademark Office, and facilitate the operations of both applicants and Turkish Patent and Trademark Office.
5- THE SIGNIFICANCE OF PATENT AND TRADEMARK ATTORNEYSHIP
There are certain details that should be recognized with regard to attorneyship which plays a vital role in ensuring that industrial property rights are protected effectively and that industrialists, individuals and establishments engaged in trade activities, and citizens who carry out research and development activities can take advantage of these rights as required. For it is observed that some individuals publicize the attorneyship system wrongfully, that powers and responsibilities of attorneys are not well understood, and that responsibilities of attorneys are not comprehended at all. Moreover, it is further observed that both experts in Turkish Patent and Trademark Attorney and many respective circles including industrialists, attorneys, lawyers, and judges make numerous complaints in this regard. The powers and responsibilities of attorneys should be well-recognized by all circles for the establishment and development of the system.
6- CAN THOSE WHO ARE NOT PATENT AND/OR TRADEMARK ATTORNEYS OFFER CONSULTING SERVICES IN THIS FIELD? CAN THESE INDIVIDUALS CONDUCT RESPECTIVE TRANSACTIONS BEFORE TURKISH PATENT AND TRADEMARK OFFICE?
The fact that there are not any institutional constructs like Unions or Chambers for Patent and Trademark Attorneys in Turkey is the most important issue. Although respective disciplinary regulations have been carried into effect through the Industrial Property Code numbered 6769, deterrent and punitive sanctions against those who act as if they are attorneys are rather inadequate. This remains on the agenda as an important item.
The applicable legislation clearly states that patent and trademark attorneys must have themselves registered to the Register of Patent and Trademark Attorneys of the Turkish Patent and Trademark Office and that those who are not registered cannot practice attorneyship as a profession. Concordantly, it is exceedingly improper for those who are not registered to the Register of Turkish Patent and Trademark Attorneys of Turkish Patent and Trademark Office to provide consulting services in this field. Therefore, applicants are urged to ask for a valid attorney certificate from those who are willing to offer applicants consulting services with respect to industrial property rights, and more importantly, to query whether these particular individuals who are willing to offer applicants attorneyship services, is a registered attorney or not via the website of Turkish Patent and Trademark Office, and to validate the authenticity of the attorney certificates of these individuals.
7- HOW THE TASK DESCRIPTIONS OF PATENT ATTORNEYS AND TRADEMARK ATTORNEYS DIFFER FROM ONE ANOTHER?
It should not be interpreted that all registered attorneys can engage in and maintain any type of transaction before the Turkish Patent and Trademark Office. For patent attorneys and trademark, attorneys differ from one another in terms of their work items. Therefore, as attorneys who are registered only to the Register of Trademark Attorneys cannot carry out any action with respect to patent applications, attorneys who are registered only to the Register of Patent Attorneys cannot conduct any action with respect to trademark applications. However, both trademark and patent attorneys may serve as design attorneys on the condition that they are registered to the Register of Patent and Trademark Attorneys of the Turkish Patent and Trademark Office.
Patent attorneys are individuals who are duly authorized to represent applicants before the Turkish Patent and Trademark Office in transactions carried out on the subjects of patents, utility models, designs, and integrated circuit topographies, to provide consulting services to applicants on these subjects, to take necessary steps, and to perform necessary operations in order to protect the industrial property rights of applicants.
Trademark attorneys, on the other hand, are individuals who are duly authorized to represent applicants before the Turkish Patent and Trademark Office in transactions conducted on the subjects of trademarks, geographical indications, traditional product names, and designs, to provide consulting services to applicants on said subjects, to take necessary steps, and to perform necessary operations in order to protect the industrial property rights of applicants.
8- WHAT IS THE EXTENT OF AUTHORITY OF PATENT AND TRADEMARK ATTORNEYS?
Patent and Trademark Attorneys
are authorized to carry out transactions on behalf of their clients before the Turkish Patent and Trademark Office only.
Patent and Trademark Attorneys do not hold authority before any of the judicial bodies (with the exception of Attorneys whose original profession is Attorney-At-Law).
Patent and Trademark Attorneys are not authorized to register trademark/patent, etc., nor they are authorized to issue any certificates.
Patent and Trademark Attorneys are not authorized to carry out any action on behalf of the Turkish Patent and Trademark Office.
Patent and Trademark Attorneys are not employees, personnel, or workers of the Turkish Patent and Trademark Office.
9- IS IT COMPULSORY FOR RIGHT OWNERS WHO WANT TO PERFORM OPERATIONS BEFORE TURKISH PATENT AND TRADEMARK OFFICE TO APPOINT AN ATTORNEY?
In principle, Turkish Citizens and individuals who reside in Turkey are not obliged to appoint an Attorney for transactions to be conducted before the Turkish Patent and Trademark Office.
Relevant persons may conduct their own operations individually before the Turkish Patent and Trademark Office.
In case legal entities who are right holders and who desire to file applications/appeals before the Turkish Patent and Trademark Office, decide to keep track of respective processes on their own without appointing an attorney, it should be noted that these processes may only be performed by person or persons who are duly authorized by competent bodies.
Individuals who reside abroad (even if they are Turkish Citizens), may only be represented by appointed attorneys.
10- WHAT ARE THE OBLIGATIONS OF ATTORNEYS?
Patent and Trademark Attorneys are responsible for ensuring and maintaining all manner of relations with the Turkish Patent and Trademark Office for the establishment and protection of rights of applicants and opponents.
Patent and Trademark Attorneys should be aware of the fact that they are obliged to conduct the correspondence between applicants and the Turkish Patent and Trademark Office on a regular basis, otherwise, they shall be held accountable for any potential loss of rights that may stem therefrom. Patent and Trademark Attorneys are obliged to notify their clients regarding any and all decisions, notifications to be issued by the Turkish Patent and Trademark Office, the subsequent sequence of processes, potential situations, and costs.
Patent and Trademark Attorneys are obliged to protect their clients' benefits and act in compliance with the code of ethics of the profession.
11- WHAT ARE THE THINGS THAT AN ATTORNEY SHOULD AND SHOULDN'T DO? (DO'S AND DON'TS)
Under no circumstances should patent and trademark attorneys make any unfulfillable or infeasible promises and commitments to their clients in any subject.
Patent and Trademark Attorneys should scrutinize all correspondences in every stage of all processes from the filing of the application and inform their clients without delay.
Attorneys should notify their clients regarding the information and documents requested by the Turkish Patent and Trademark Office in a timely fashion in order to ensure that these documents are prepared and drafted properly by their clients.
Attorneys should be aware of the fact that they are obliged to exercise due diligence and provide assistance to their clients with respect to relevant processes as well as in information and documents to be supplemented
Patent and Trademark Attorney occupation codes and disciplinary penalties to be enforced for attorneys whose actions violate the applicable rules are provided in TURKISH PATENT AND TRADEMARK OFFICE PATENT ATTORNEYS AND TRADEMARK ATTORNEYS OCCUPATION CODES AND DISCIPLINARY REGULATIONS.
12- DO PATENT AND TRADEMARK ATTORNEYS HAVE PROFESSIONAL LIABILITIES?
Attorneys are responsible for the errors that may potentially stem from their own negligence as well as the consequences with regards to the actions they take in line with the powers granted to them. Consequently, attorneys are required to have professional indemnity insurance. However, disciplinary provisions enforced in Bar Associations for lawyers are not applicable for attorneys due to lack of legislation. Patent and Trademark Attorneys do not have a professional organization like bar associations. Those who are involved in this sector try to fill this gap in cooperation with professional associations in superficial endeavors.
The effective operation of the Turkish Industrial Property System depends on the development and proper functioning of the attorneyship system.
13- WHAT ARE THE IMPORTANT FACTORS TO BE CONSIDERED BY COMPANIES WHEN APPOINTING A TRADEMARK OR PATENT ATTORNEY?
When companies want to appoint a trademark or patent attorney to have their industrial properties, e.g., a trademark or a patent registered, the most important factor they should observe is whether an attorney is registered to the Register of Patent and Trademark Attorneys of Turkish Patent and Trademark Office, and is actively practicing as a patent or trademark attorney or not. Quite naturally, as you would not let anyone who does not possess a driver's license to drive your car, or let anyone who is not a doctor to treat you, or confer with anyone who is not an attorney-at-law on legal subjects, you would not hand your trademarks, inventions, or designs over to anyone who does not possess a valid Patent or Trademark Attorney Certificate. Therefore, you cannot rely on the counsel of someone who is not a patent or trademark attorney.
14- THE CURRENT STATE OF PATENT AND TRADEMARK ATTORNEYS IN TURKEY
In recent years, Turkey has seen a significant increase in the number of trademark, patent, and utility model applications. Although figures indicate a substantial increase in application numbers, it is not possible to conclude that we have managed to achieve a sufficient level of awareness regarding property rights for trademarks, patents, utility models, etc. We still need to cover a lot of ground in this regard. Creating and raising awareness in this regard requires establishing an organizational structure for Patent and Trademark Attorneys as well as preventing those who are not duly authorized to act as patent and trademark attorneys from rendering services in this sector. Statistical data clearly indicates that the number of qualified attorneys who are capable of rendering attorneyship services and who possess the necessary professional responsibility should also increase in line with the number of industrial property registration applications.
ADMINISTRATIVE BOARD OF THE ASSOCIATION OF PATENT AND TRADEMARK ATTORNEYS
