UPC and Protective Letters: are you really protected?

 

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.