A patentee may apply to the UPC for provisional measures against an alleged infringer before an infringement action has been brought or decided. The patentee may request an injunction, the seizure of allegedly infringing goods, and the freezing of the defendant’s bank accounts and assets. The patentee may request that the Court grants these measures without first hearing the defendant.
A defendant may therefore be faced, without any prior warning or opportunity to state its defence, with Court orders that seriously impact on its business, such as an injunction preventing an imminent product launch.
Fortunately, Rule 207 of the UPC Rules of Procedure (RoP) provides a counterbalance to a patentee’s right to seek provisional measures: A party that suspects a patentee might bring such an action can pre-empt that action by filing a Protective Letter with the UPC Registry.
What is the purpose of a Protective Letter?
The purpose of a Protective Letter is to persuade the Court not to grant provisional measures, such as an injunction or seizure of goods, against a party without first hearing that party. It provides a party with the opportunity to present its arguments to the Court, rather than the Court hearing only the arguments of the patentee. If a patentee applies for provisional measures and a Protective Letter from the defendant is on file, it becomes much less likely that the Court will issue any orders against that defendant without first hearing the defendant. Under Rule 209(2)(d) RoP, the Court will consider summoning both parties to a hearing if a Protective Letter is on file.
A Protective Letter is therefore a useful tool to greatly reduce the risk of receiving a surprise injunction and the potentially serious business consequences of such an injunction.
What should a Protective Letter contain?
A Protective Letter should contain an outline of the arguments why provisional measures ought not to be granted. Those arguments are likely to include reasons why the patent is not infringed and/or why the patent is invalid. Evidence, such as a prior art document relied on, should be filed with the arguments.
The Protective Letter may include other arguments also, for example that the potential harm to the defendant of granting provisional measures, such as an injunction, is greater than the potential harm to the patentee of not granting such measures, or that there has been an unreasonable delay by the patentee in seeking any provisional measures.
The Protective Letter must also include administrative information, such as the name of the defendant, the defendant’s address for service, and the name and, if known, address for service of the presumed applicant for provisional measures (e.g. the patentee or exclusive licensee). In addition, a modest fee of €200 must be paid.
Is a Protective Letter visible to the public or other parties?
Importantly, a Protective Letter is held by the Court Registry and is not made publicly available. It is not possible for others to see whether a party has filed a Protective Letter or whether a Protective Letter has been filed in respect of a given patent.
If an application for provisional measures is made, the Registry will forward the Protective Letter to the judge(s) hearing the application for provisional measures. The Registry will also then forward the Protective Letter to the applicant for provisional measures (e.g. patentee).
How long does a Protective Letter have effect?
A Protective Letter is kept on file by the Registry for six months. After that, the Protective Letter is removed from the file unless the party that lodged the Protective Letter requests that the Protective Letter be kept on file for a further six months and pays an extension fee of €100. Subsequent extensions, each of six months on payment of the fee, are available.
Can a Protective Letter be filed in respect of a patent which is opted out?
Under Rule 207 RoP, a potential defendant may file a Protective Letter if they “consider it likely” that an action for provisional measures may be brought at the UPC in respect of a patent. We expect the Registry to allow a Protective Letter to be filed in respect of a patent which is opted out. This is because the patentee could at any time, unless national proceedings have been initiated under the patent, withdraw the opt out and bring proceedings at the UPC. Thus, even for an opted-out patent, a potential defendant may reasonably consider it likely that proceedings may be brought at the UPC.
Have parties made use of Protective Letters at the UPC?
Yes, since the UPC opened for business on 1 June 2023, the filing of Protective Letters has proved popular. According to the UPC Registry, by 26 June a total of 236 Protective Letters had been filed.