Patentees under the jurisdiction of the UPC are able to seek and may be granted provisional measures, ex parte, without hearing the respondent.
Provisional measures may include injunctions, seizure or delivery up of suspected infringing goods or an award for costs. This poses a serious risk to infringers, particularly considering the ability to enforce rights across all 17 participating UPC member states, effectively shutting them out of most of Europe.
Whether ex parte or in the presence of the defendant, such measures may be ordered by the Court quickly, even on the same day.
Should a party suspect that an application for provisional measures may be filed against them, a protective letter may be filed with the UPC at any time. This takes the form of a pre-emptive statement which sets out a party’s defence to the suspected assertion of infringement, a procedural tool currently available in patent litigation in Germany and the Netherlands.
If a protective letter is lodged and, subsequently, an application for preliminary measures is made in respect of the corresponding patent, the Court is more likely to arrange an oral hearing in which it will consider the facts, evidence and arguments set out in the protective letter.
However, the letter should set out why an application for provisional measures should be rejected including statements of facts and argument as to why you do not infringe and/or why the patent is invalid and any written evidence supporting these assertions. It is sensible to cover both infringement and validity, given both will be considered as part of preliminary injunction proceedings. Note that, if the court does not consider the protective letter to be persuasive, it may still, in exercising its discretion, proceed to order a preliminary injunction without hearing the defendant (as was demonstrated in a recent case).
Should no application for provisional measures be lodged within 6 months from the date of receipt by the Court of the protective letter, the letter shall be removed from the UPC register unless a 6-month extension is applied for. Protective letters can be refiled or rolled over every 6 months. Importantly, protective letters are not made public unless or until an application for provisional measures is made, and so the patentee will not otherwise know such a letter has been lodged with the UPC.
Considering the low official fee of just €200 for the lodging of a protective letter, it serves as a cost-effective defence mechanism to be considered by parties when assessing their freedom to operate strategy. Moreover, if parties have already carried out freedom to operate analysis in respect of the patent in question, such argumentation can be included in the protective letter, reducing costs of drafting such submissions.
Whilst protective letters do not prevent the judge ordering a preliminary injunction per se, a properly substantiated protective letter can significantly increase the chances of prospective infringers being heard before the Court determines whether an order should be granted.
