http://ipkitten.blogspot.com/2023/10/upc-and-protective-letters-are-you.html
One of the
first preliminary injunctions by the Unified Patent Court was issued by the UPC
Local Division of Düsseldorf (Germany). The injunction was granted ex parte
despite a Protective Letter having been filed before the filing of the application for preliminary
measures.
Protective
letters at the UPC
A Protective Letter is aimed at convincing a
Court to refrain from granting an ex parte preliminary injunction/seizure, without prior hearing of the parties involved in the case. The aim of a Protective
Letter is to give the defendant a chance to express their arguments to the
Court instead of the Court hearing only the arguments of the patentee. Protective
Letters are allowed in a few European countries (Germany, Belgium and The
Netherland).
According to the Unified Patent Court (UPC) in the Frequently Asked Questions section:
a) “a protective letter may be filed,
typically where a person considers that there is a risk that an application for
provisional measures against him as a defendant may be lodged before the UPC
(Rule 207 of the Rules of Procedure of the UPC). A protective letter, in
essence, is a pre-emptive statement of defence”;
b) “A protective letter may be filed at any
time. It may contain facts, evidence and arguments of law and set out the
reasons why any future application for provisional measures should be rejected
by the UPC. The protective letter has effect for a period of 6 months
(extendable upon payment of an extension fee). It is not made public. A fee has
to be paid”.
The
proceeding before the UPC Local Division of Düsseldorf
On 22 June 2023 (the decision is in German) the first
ex parte preliminary injunction was granted by the UPC Local Division of
Düsseldorf. myStreomer AG (the applicant) enforced European Patent No. 2 546 134 against the alleged infringer RevoltZycling AG
(the defendant). On 19 June 2023, prior to the filing of the application for a preliminary
injunction, the defendant had filed a protective letter with several defensive
arguments. As a matter of urgency, the applicant argued that the infringing
products were supposed to be exhibited in a soon approaching international
tradeshow.
The Court concluded that there was infringement and
validity of the patent in suit. The Court then examined the
protective letter in granting the ex parte preliminary injunction.
The Court observed that in the Protective
Letter the defendant invoked exhaustion and contested infringement, but did not
challenge the validity of the patent. The Court did not consider relevant the
non-infringement argument and observed that the argument regarding the
exhaustion of rights had been previously heard and dismissed by a Swiss Court. Therefore, the Court disregarded the Protective Letter and
granted the ex parte preliminary injunction one day after the filing of
the application at the UPC.
Some preliminary
takeaways on protective letters at the UPC
The decision shows a first approach of the UPC
to Protective Letters, that do not prevent per se the granting of an ex
parte preliminary injunction. In the case at issue the Court both considered
the urgency of the matter and the fact that the defendant did not challenge the
validity of the patent in suit.
When filing a Protective Letter, potential defendants need to look at the validity of the patent and develop arguments on validity that cannot be as easily brushed aside as non infringement or previously rejected arguments. Otherwise, there remains the risk of a possible grant of an ex
parte injunction.
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