A guide to the UPC and the UP - Flipbook - Page 323
Who May File a Protective Letter?
16-77 R.207 RoP provides that a protective letter may be filed by “a person entitled to start
proceedings under Article 47 [UPCA]…” if that person considers it likely that an application for
provisional measures may be lodged against them as a defendant. Art.47 UPCA sets out the
parties entitled to bring actions before the Court, namely, the patentee and any licensees and
includes any natural or legal person or anybody entitled to bring an action in accordance with
its national law who is concerned by a patent 78 i.e. someone who foresees the possibility that
an action for infringement could be brought against them and thus potentially an application
for provisional measures.
16-78 R.207(1) RoP refers to “a person” as filing the protective letter. There seems to be no objective
reason why multiple persons having the same concern about the same patent could not file a
joint protective letter despite the fact that r.207(1) RoP does not expressly provide for this.
Related undertakings such as companies in the same group might foresee a likelihood that they
would be subject to the same application for provisional measures, and such undertakings
would each wish to benefit from the protection provided by a protective letter. If a protective
letter can be filed by multiple persons then this would make the process more efficient and
represent a cost saving since there is a fee for filing a protective letter. R.207(2)(a) RoP refers to
a protective letter being required to include the name of the defendant or defendants and
therefore arguably contemplates that a protective letter may be filed by several persons.
Filing a Protective Letter
16-79 The protective letter is to be filed at the Registry 79 with a fee. 80 The fee is €200. The letter must
be filed in the language of the patent concerned. 81
16-80 R.207(5) RoP specifies the actions the Registry must take on receipt of a protective letter. It must
check the protective letter as soon as practicable for compliance with the formal requirements
of rr.207(2) and 207(3) RoP. 82 If the formal requirements are met, the protective letter will be
entered on the register together with the date of its receipt and details of the protective letter
will be provided to the first instance divisions of the Court. If there is an application for
provisional measures already filed, the letter will be provided to the relevant panel or single
judge dealing with it. The protective letter will not be made publically available until it has been
forwarded to an applicant who has applied for provisional measures. 83
16-81 Note that the RoP provide that until the fee is paid, the letter is deemed not to have been
lodged. 84 However, the list of matters that the Registry must check on receipt of the protective
letter prior to entering the protective letter on the register does not include the payment of the
fee. Therefore, it would appear, prima facie, that where a protective letter is filed without the
relevant fee, it would still be entered on the register and circulated to the Court
notwithstanding r.207(10) RoP. It may be that the Registry will interpret r.207(10) RoP as
meaning that it should not embark upon the examination of the protective letter until the fee
has been paid since the letter is “deemed not to have been lodged”. Not only is this the most
practical way forward, it is supported by r.207(6) RoP which provides that the Registry must as
soon as practicable invite the defendant to pay the fee and correct any deficiencies in the
protective letter. This implicitly requires the Registry to check the paying of the fee when
checking that the protective letter complies with the formal requirements. Prudent applicants
should certainly ensure that the fee is paid at the same time as the protective letter is filed in
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art.47(6) UPCA.
r.207(2) RoP.
r.207(4) RoP and part 6 RoP.
The potential defendant may also consider filing extra translation(s) in the most likely language(s) of the proceedings.
See paragraphs 16-83 to 16-87 for the contents of the protective letter.
r.207(7) RoP.
rr.207(10) and 15(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 313
