A guide to the UPC and the UP - Flipbook - Page 325
inform the defendant about the application for provisional measures if the application had
been made on an ex parte basis is another question. If it did so, then it would be easy and
cheap to prepare protective letters and would be contrary to the practice in Germany where the
courts will not inform the defendant before an ex parte provisional (preliminary) injunction is
granted. Furthermore, it is not immediately clear why r.207(5) RoP requires the Registry to
examine the protective letter with regard to this non-mandatory material. This may be an
indication that the protective letter should contain the basis on which the defendant would
defend the application, but that the content should not go beyond that specified in r.207(3) RoP;
however this is not explicitly stated in the RoP.
16-85 The non-mandatory content for any protective letter specified in r.207(3)(a) to (c) RoP is
as follows:
– An indication of the facts relied on;
– Any available written evidence relied on; and
– Arguments of law, including the reasons why any application should be rejected.
16-86 The indication of the facts relied upon may include: 89
“a challenge to the facts expected to be relied on by the presumed applicant … and/or, where
applicable, any assertion that the patent … is … invalid and the grounds for such an assertion”.
The first part presumably refers to facts that might relate to infringement allegations and
to facts that might relate to the reasons an applicant might give for the need for
provisional measures.
16-87 Written evidence is a term used in r.170(1)(a) RoP and includes documents, witness statements
and drawings. It does not include expert reports and reports on experiments. It is unclear
whether the use of the term written evidence in r.207(3) RoP is limited to this type of evidence
or whether it includes all types of evidence, as listed in r.170(1) RoP, but in written form. If it is
the former, it may limit the ability of a person lodging a protective letter to substantiate
suggestions of a patent’s invalidity, but it is more likely to be the latter and therefore expert
reports will be allowed in.
The Effect of Filing a Protective Letter
16-88 Where an application for provisional measures is made against a person who has lodged a
protective letter, a copy of the letter will be forwarded by the Registry to the panel or single
judge. 90 The Court will then take account of the contents of the protective letter when
considering how to exercise its discretion under r.209(1) RoP. As specified in r.209(2)(d) RoP,
the Court must “in particular consider summoning parties to an oral hearing” where a relevant
protective letter has been filed. R.209(5) RoP specifies that the presence of a protective letter in
respect of the same patent provides a basis for the applicant for provisional measures to
withdraw the application pursuant to r.209(4) RoP. Presumably, therefore, the Court is to inform
the applicant that a protective letter in respect of that patent has been filed in order to allow
the applicant to exercise the option to withdraw the application either before or at the same
time as the Court informs the applicant of whether an oral hearing would be required for
the application to proceed. The applicant also has an opportunity to withdraw the application
if the Court decides not to order the provisional or protective measures without hearing the
defendant. 91 If the applicant does not withdraw the application, r.207(8) RoP specifies that the
89
90
91
r.207(3)(a) RoP.
r.207(8) RoP.
r.209(4) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 315
