A guide to the UPC and the UP - Flipbook - Page 324
order not to delay the formal lodging of the protective letter which might be time-critical in
some instances. In respect of any other deficiencies that might have crept into the protective
letter, r.207(6)(a) RoP provides that the Registry must invite the potential defendant to correct
them within 14 days of service of such notification. 85 It is unclear what the effect of this
correction period is since the RoP do not explain any further. It may be only that the potential
defendant need not pay a further fee to file a new protective letter or it may be that
notwithstanding its deficiency the protective letter may still have some effect if a provisional
measure is filed during the 14-day period.
16-82 A protective letter will expire six months after the date of receipt unless an application for
protective measures is lodged or the maker of the protective letter pays an extension fee prior
to expiry. 86 This rule partly reflects the practice in Germany, where the court requires renewal
of protective letters at either 3, 6, 12 or 24 month intervals. The fee for an extension of the
protective letter filed with the Court is to be €100. Thus, the person filing the protective letter
needs to be aware of the date of receipt recorded by the Registry in order to ensure that the
extension fee is paid in good time. The RoP do not provide that the Registry will inform persons
filing protective letters of the date of receipt recorded in the register, but hopefully the Registry
will do this as a matter of good administration.
The Contents of a Protective Letter
16-83 The basic requirements are set out in r.207(2)(a) to (f) RoP. The protective letter must contain
the following:
– The name of the defendant or defendants filing the letter and their representative: note that
the wording of r.207(2)(a) RoP suggests that the latter is mandatory; it is unclear whether the
defendants can later change the name of their representative, should they wish to do so,
without filing a new letter;
– The name of the presumed applicant: this would be the patentee or exclusive licensee in
most circumstances, since the provisional measures are likely to be brought against an
alleged infringer or intermediary by a patentee or exclusive licensee;
– Postal and electronic addresses for service and names of persons authorised to
accept service;
– Where available, the postal and electronic addresses for service of the presumed applicant
for provisional measures;
– Where available, the patent number and, where applicable, information about any prior or
pending proceedings; and
– The statement that the letter is a Protective Letter.
16-84 In addition, the protective letter may also contain the basis on which the defendant would
defend an application for provisional measures. 87 It is odd that the RoP even contemplate that
the protective letter might be filed without this information since the effect without it is highly
questionable. Would the protective letter, for example, have the same effect if it did not contain
such information at all? The effect of a protective letter is that the Court must consider
summoning the parties to an oral hearing, but it does not have to do so. 88 It is merely one of
the criteria that the Court has to consider when exercising its discretion. Therefore, without
such detail, the Court may well be inclined to carry on without ordering an oral hearing as it
would have no information to consider when exercising its discretion. Whether it would still
85
86
87
88
Unlike the paying of the fee, where there is no time limit, see r.207(6)(b) RoP.
r.207(9) RoP.
r.207(3) RoP.
r.209(2)(d) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 314
