Protective letters at the Unified Patent Court (UPC)
The UPC is a court common to the Contracting Member States, in which it has exclusive jurisdiction.
A Protective letter may reduce the risk of facing provisional measures granted by the UPC without being heard beforehand.
However, Protective letters are likely to be most effective if good arguments can be presented therein – otherwise they may be counterproductive.
Interim measures at the UPC without involving the defendant
Under the UPC, provisional measures may be requested by a patentee against an alleged infringer including:
- prohibition of the continuation of the alleged infringement (preliminary injunction), and
- seizure or delivery of the products suspected of infringing a patent so as to prevent their entry into, or movement, within the channels of commerce (saisie).
These provisional measures may be granted without hearing the defendant.
Such measures can have a huge impact on a business, potentially locking a party out of a significant portion of the European market.
The UPC Rules of Procedure provide for the filing of a Protective letter to allow a party an opportunity to defend itself against such attacks where that party considers that there is a risk that an application for provisional measures against him may be lodged before the UPC. (Rule 207 of the Rules of Procedure of the UPC).
When exercising its discretion whether to inform the defendant, to summon the parties to an oral hearing, to summon the applicant to an oral hearing without the presence of the defendant, amongst other considerations, any Protective letter filed by the defendant should be taken into account by the Court.
A Protective letter, in essence, is a pre-emptive statement of defence. A Protective letter may be filed at any time. It should be filed in the language of the patent likely to be invoked.
In accordance with Rule 207 of the Rules of Procedure of the UPC, the Protective letter shall contain:
(a) the name of the defendant or defendants filing the Protective letter and of the defendant’s representative;
(b) the name of the presumed applicant for provisional measures;
(c) postal and electronic addresses for service on the defendant filing the Protective letter and the names of the persons authorised to accept service;
(d) postal and, where available, electronic addresses for service on the presumed applicant for provisional measures and the names of the persons authorised to accept service if known;
(e) where available, the number of the patent concerned and, where applicable, information about any prior or pending proceedings referred to in Rule 13.1(h); and
(f) the statement that the letter is a Protective letter.
It may, may contain facts, evidence and arguments of law as to why any future application for provisional measures should be rejected by the UPC. The protective letter will have effect for a period of 6 months (extendable upon payment of an extension fee). It will not be made public. A fee will have to be paid.