A guide to the UPC and the UP - Flipbook - Page 177
11-23 Prior to sending a letter before action that does anything more than notify the recipient
of the patent, patentees should check whether there is any relevant national legislation on
actions for unjustified threats of patent infringement which might inform whether and if so
how the patentee should notify the recipient. The letter before action could be a basis for an
independent action before a national court for an injunction and damages if national rules
are not followed.
Preliminary Injunctions, Saisies and Freezing Orders
11-24 Where there is an urgent need to prevent a threatened infringement or to stop the continuation
of an alleged infringement, the UPCA and RoP provide that the patentee may apply for various
provisional measures including injunctions, seizure of goods and blocking bank accounts. 43
Such an application may be made ex parte in particular where any delay is likely to cause
irreparable harm or where there is a risk of evidence being destroyed. A party may also apply
for an order to preserve evidence (a saisie) 44 or a freezing order if it believes that a defendant
is about to remove assets from the jurisdiction of the Court. 45 Again, in both cases such
applications may be made ex parte where any delay is likely to cause irreparable harm or
where there is a risk of evidence being destroyed or assets removed. 46
Protective Letters
11-25 Anyone who is concerned that they may be sued for patent infringement should consider
filing a protective letter 47 at the Registry if there is a likelihood that the patentee might apply
ex parte for either provisional measures (e.g., an injunction) or a saisie. A protective letter sets
out the response to any such application that might be made by the patentee. For example,
the letter might set out why the patent is not infringed or why it is invalid.
11-26 The content of the protective letter is specified as one of the factors that the Court must
consider in exercising its discretion on how to proceed in an application for a provisional
injunction. 48 Such letters are particularly useful to defendants in ex parte applications as the
defendant’s submissions can be seen by the judge. In many jurisdictions where protective
letters are common, the effect of the protective letter is that the judge will then order an oral
hearing to take place. This is also contemplated in the RoP. 49
Written Procedure
11-27 The written procedure for an action on the merits is set out in part 1 RoP. The Court has
exclusive competence over the actions listed in art.32(1)(a) to (i) UPCA, namely:
– Infringement actions including counterclaims for revocation; 50
– Revocation actions;
– Declarations of non-infringement (DNI);
– Actions for compensation for licences of right under art.8(1) Unitary Patent Regulation; and
43
44
45
46
47
48
49
50
art.62 UPCA and part 3 RoP. See also chapter 16 (Provisional and Protective Measures).
art.60 UPCA and part 2, ch.4 RoP. See also chapter 18 (Orders to Produce Evidence Including “Saisies”).
art.61 UPCA and r.200 RoP.
rr.197 and 212 RoP.
r.207 RoP.
r.209(2)(d) RoP.
See chapter 16 (Provisional and Protective Measures) paragraphs 16-73 to 16-89.
Actions for infringement and declarations of non-infringement relate to both patents and SPCs, and the reference to
revocation actions includes invalidity actions over SPCs.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 167
