A protective letter can be used to file arguments with a court regarding the non-infringement or invalidity of a patent in order to immediately oppose a subsequent application for a preliminary injunction based on this and to defend against the requested ex parte injunction.
The UPC also offers the filing of protective documents. There they are configured as an efficient service. A professionally drafted protective letter can develop into an important and cost-effective preventive means of defence at the UPC. Simply filing it once with the UPC ensures that its details are passed on to all chambers. If an application for interim legal protection is filed, the protective brief is automatically forwarded to the competent panel or single judge.
The protective letter: a preventive means of defence against a preliminary injunction
A protective letter can be filed with the UPC if a person offering or selling a technology fears that a request for provisional measures may be filed with the court against him as a defendant in the near future (Rule 207 of the Rules of Procedure of the Unified Patent Court). Provisional measures may be ordered without prior hearing of the defendant (ex parte) (Rule 212), but the court must in particular consider summoning the parties to an oral hearing if the defendant has filed a relevant protective letter (Rule 209, 2 d). Accordingly, the filing of a protective letter is a preventive means of defence to reduce the risk of an ex parte order for interim measures.
The court may order provisional measures without prior hearing of the defendant in particular if a delay is likely to cause irreparable harm to the applicant or if there is a demonstrable risk that evidence will be destroyed (Rule 212). The filing of a protective letter can therefore serve to convince the court that there is enough time to hear the parties without irreparable damage and/or that the evidence is not at risk. The purpose of the protective letter is therefore to dissuade the UPC from issuing an interim injunction in principle or at least to schedule an oral hearing in which the defendant can present its arguments.
Contents of the protective letter
The protective letter must be submitted in the language of the patent. It should contain facts, written evidence and legal arguments that speak against patent infringement or at least against the urgency of a preliminary injunction. In this sense, the content of the protective letter may include non-infringement arguments and, if relevant, grounds for invalidity of the patent (Rule 207, 2, 3 a – c). As a general rule, it should be noted that a protective letter must be drafted in a legally competent manner, as any weakly formulated arguments may even work against the defendant in the course of the proceedings.
Formally, the protective letter must include the name of the defendant, the defendant’s representative, the alleged applicant and the corresponding authorised representative for service, the postal and electronic address for service of the respective party and the number of the patent in question (Rule 207, 2 a-e).
Place of filing
With regard to European patents for which no opt-out request has been filed and European patents with unitary effect (unitary patents), protective letters must be filed directly in the UPC’s case management system. In addition, it may also make sense to file a protective letter with the UPC against European patents that have been removed from the jurisdiction of the UPC by means of an opt-out, as an opt-out request can be withdrawn at any time (Art. 83, para. 3, 4).
During a transitional period of seven years after the entry into force of the Agreement on a Unified Patent Court, the UPC and the national courts have concurrent jurisdiction for European patents for which the lack of jurisdiction of the UPC has not been requested (opt-out request) (Art. 83, para. 1, 3 UPCA). For this reason, the protective letter can also be filed in the national courts. For German patents and German parts of European patents, the protective letters must be filed in the German central electronic register of protective letters (ZSSR).
Duration and costs
The protective letter is a temporary protective measure. Although it can be filed at any time, its term of protection is limited to six months. After this period has expired, an extension of a further six months is possible subject to payment of a fee. Further six-month extensions can also be requested if the corresponding fee is paid (Rule 207, 9).
The protective letter is filed with the Registry[1] and, as long as it fulfils the legal requirements, is entered in the register and its details are forwarded to all chambers (Rule 207, 2, 5 b, c). However, the protective letter only becomes publicly available in the register when an application for an interim injunction is filed (Rule 207, 7). As a result, a copy of the protective letter is served on the designated panel or single judge together with the request for provisional measures and a copy of the protective letter is served on the applicant as soon as possible. (Rule 207, 8 and 208, 1). However, it will be removed from the register if no application for provisional measures is filed within six months of its receipt, unless an extension of time has been requested and the relevant fee has been paid (Rule 207, 9).
As already mentioned, the filing of the protective letter requires the payment of a fee (Rule 207, 4), which is set in the UPC’s schedule of court fees[2] and amounts to 200 euros. In this regard, it should be noted that in the event of an unsuccessful application for interim measures, the costs incurred in filing the protective letter may be reimbursed. According to the case law of the UPC, the applicant of an unsuccessful application for interim measures must generally also bear the costs incurred by the defendant in filing a protective letter. In the view of the Local Division, this results from the fact that the filed protective letter has become part of the proceedings for the adoption of provisional measures through its transmission in accordance with Rule 207.8 of the Rules of Procedure. The costs incurred as a result of the filing of a protective letter must therefore generally be reimbursed by the unsuccessful applicant.[3] The court has thus emphasised the importance of a protective letter both for the outcome of the proceedings and for the allocation of the costs of the proceedings.
Procedure
If the UPC decides against an ex parte order for a preliminary injunction and subsequently intends to invite the parties to an oral hearing, the applicant will first be notified of this. As a result, he may withdraw his application for an interim injunction and request that the court declare the application and its contents confidential (Rule 209, 4, 5). In this way, the applicant is offered the opportunity to weigh up the arguments in the protective letter again and, if necessary, to withdraw his application without the defendant or the public finding out about it.
If the applicant does not withdraw his application, the court will order the application to be forwarded to the defendant, with a request to lodge an objection to the application for interim measures within a specified period (Rule 209, 1, a). The court will then probably summon the parties to an oral hearing (Rule 209, 1, b).
The court may also summon an applicant to an oral hearing in the absence of the defendant, despite the protective letter having been filed, in particular if it considers the protective letter to be unconvincing (ex parte order pursuant to Rule 209, 1, c, 212).[4]
Author: Dr. Olga Michala
E-mail: michala@paustian.de
[1] Art. 10 UPCA, Rules 3, 4 RP
[2] https://www.unified-patent-court.org/sites/default/files/upc_documents/ac_05_08072022_tabelle_gerichtsgebuhren_d.pdf
[3] Proceedings number UPC_CFI_292/2023 issued on 20/12/2023 by the Local Chamber of Munich
[4] See also: ‘Interim injunction without oral proceedings despite protective letter’, UPC, Local Chamber Düsseldorf, order of 22 June 2023 – UPC CFI 177/2023, ORD 525740/2023.