A guide to the UPC and the UP - Flipbook - Page 322
been disclosed to keep this information confidential. This may raise questions of how to keep
information confidential that has already been seen by the claimant.
Protective Letters
16-73 Protective letters are an important part of the Court’s provisional measures regime. A protective
letter sets out the response to any application that might be made for provisional measures in
order to protect the potential defendant. For example, the letter might set out why the patent
is not infringed or why it is invalid. The content of the protective letter is specified as one of the
factors that the Court must consider in exercising its discretion on an application for provisional
measures. 77 Such letters are particularly useful for 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.
16-74 The concept and use of protective letters are familiar to practitioners in certain European
jurisdictions. Protective letters are a regular means of defence in German preliminary injunction
cases. In Germany, the first jurisdiction to introduce them, courts will not inform the filer of a
letter about a preliminary injunction application made ex parte, since the purpose of such an
application is to keep it from the defendant until the order is made, or until at least the oral
hearing is scheduled. A protective letter can contain reasons why it would be inappropriate
for an injunction to be made ex parte in addition to reasons why a provisional injunction
should not be ordered at all which reasons would likely include in particular cogent noninfringement arguments.
16-75 The German practice was copied by the Dutch patent court in the Netherlands with the
implementation of the ex parte measures in the Dutch Civil Code. Unfortunately, the practice
has no basis in law and has not been accepted by all Dutch courts. Since the court, in whose
district the defendant or infringing goods are located, is exclusively competent to hear
preliminary measures to seize evidence or goods (injunctions only being possible at the
patent court), this means that potential defendants in uncooperative districts cannot use
protective letters.
16-76 In Belgium, where historically such letters could not be filed since they did not relate to any
particular proceedings, protective letters may now be filed to guard against the granting of
provisional measures. However, the opposite has occurred in France where, after a short
interim period where protective letters were accepted by the Paris court, such a practice has
been given up. The reasons are quite straightforward. Firstly, under French national law ex
parte injunctions are available in very exceptional and rare circumstances and only where any
delay in granting the injunction would cause irreparable harm to the claimant. As a result,
preliminary relief proceedings are normally initiated through inter partes proceedings.
Secondly, in the case of ex parte decisions, the defendant can ask the judge for an inter
partes review of the case within a very short time period. It is noteworthy that this regime
is comparable to that of the Court.
77
r.209(2)(d) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 312
