Under the Unified Patent Court (UPC) Agreement, a claimant seeking provisional measures based on a non-opted out European patent or a European patent with unitary effect ("unitary patent") may file an application for provisional measures before the main proceedings have been started (Rule 206 of the Rules of Procedure of the UPC (RPUPC). More importantly, the claimant may obtain the provisional measures without the defendant being heard to oppose the application, in particular where any delay is likely to cause "irreparable harm" to the applicant or where there is a "demonstrable risk of evidence being destroyed" (Rule 212 RPUPC). One of the more common uses of such applications is to prevent a competitor from promoting an allegedly infringing item at an upcoming trade fair.
Inspections or orders for preserving evidence were for example authorized ex parte by the Milan Local Division (CFI 127/2023, CFI 141/2023 and CFI 286/2023) and the Brussels Local Division (CFI 329/2023) because the Court, in these cases, considered that the exhibition of a potentially infringing product in an ongoing or incoming trade fair amounted to a high degree of urgency. Moreover, the applicant's burden of showing the probability of infringement and the validity of the patent was not set particularly high. For example, the Brussels Local Division stated that "[t]he applicant has made it plausible that he is the holder of a valid patent and that the defendant infringes this in Belgium with the [...] products." (emphasis added). The fact that the European patent was maintained as granted after an opposition was clearly judged as a proof of validity by the Milan Local Division in CFI 286/2023. In CFI 141/2023, the same Division considered that the patent enjoyed a "presumption of validity" and that the evidence submitted by the applicant to prove the infringement was at least proper "circumstantial evidence."
Where a person has reason to believe that there is a risk that an application for provisional measures against him/her may be lodged before the UPC, filing a protective letter with the UPC can be a defensive option (Rule 207 RPUPC). Protective letters are pre-procedural measures having a quite long tradition in some European countries, for example in Germany ("Schutzschrift"), Switzerland, and the Netherlands, and a more recent and limited application in France.
Under the UPC, a protective letter may be filed with the Registry at any time. Since any opted-out European patent could be opted in, such a letter could be filed not only in case of a non-opted out European patent or a unitary patent, but also (at least in principle) in case of an opted out European patent, for which the UPC is not competent at the time of filing the letter. The protective letter may contain facts, evidence and arguments and set out the reasons why any future application for provisional measures should be rejected by the UPC. The protective letter is not made public, is subject to an official fee of 200 EUR, and has effect for a period of 6 months, which is extendable upon payment of an extension fee of 100 EUR.
Whether the protective letter succeeds or not, however, depends on the circumstances. Based on the first orders and decisions issued by the UPC, it is clear that the mere filing of a protective letter as such is not enough as a defense. Rather, the facts, legal arguments, and written evidence to be submitted in the letter should convincingly persuade the Court that the contested embodiment does not infringe the patent, and in particular that the contested embodiment does not fall within the scope of protection of the patent or that the patent is not valid. The letter should detail the facts relied on, including 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 assertion, written evidence, such as relevant prior art documents, and legal arguments setting out the reasons why any request for provisional measures are not justified and should thus be rejected.
In an order of the Düsseldorf Local Division relating to an application for provisional measure (CFI 177/2023), the Local Division issued provisional measures without prior hearing of the respondent despite the filing of a protective letter invoking exhaustion of rights and denying any infringement of the patent at issue, relating to a combination structure of bicycle frame and motor hub, by an embodiment subsequently contested in the application for provisional measures. In particular, the respondent argued that "its second fork is not recessed with an internal thread hole corresponding axially to the through hole," as claimed in claim 1. However, according to the Court, the respondent had "not significantly denied ... in [the] protective letter that the contested embodiment directly and literally infringes the patent at issue. In particular, the design of the contested embodiment – as judged from the functional description thereof provided in the protective letter – wherein the internal thread is not located directly in the hole of the second fork, but in a sensor attached to it, is still covered by the protective scope of the patent at issue, which does not exclude such a multi-part design of the second fork." On the other hand, no relevant prior art challenging the validity of the patent was presented in the protective letter. As a consequence, the respondent was ordered to refrain from offering, placing on the market or using, or importing or possessing for these purposes the combination structures in the four participating states where the European patent was in force, and to pay an interim award of costs pending the decision on the costs of the proceedings. Since the Court judged that the applicant credibly demonstrated that any delay was likely to cause irreparable harm to the applicant and that the trade fair where the respondent exhibited its products was "an important leading trade fair [having] considerable relevance for the entire industry," the Court concluded that "it is obvious that the exhibition of the contested embodiment at this trade fair can lead to a loss of sales or market share for the Applicant that can hardly be reversed."
The Düsseldorf Local Division issued a preliminary injunction ex parte also in CFI 452/2023, relating, again, to an exhibition of the challenged product at a trade fair. When granting provisional measures, the Court established that their application was well founded for a number of reasons, including the fact that the defendants had not made use of the option to file a protective letter despite the time that had passed since receipt of a warning.
The costs incurred by the defendant in filing a protective letter may be recovered whenever an application for provisional measures does not succeed. In particular, the Munich Local Division (CFI 292/2023) has stated that in such a case, the applicant of the unsuccessful application, must bear not only the costs of the legal dispute, but also the other costs of the proceedings incurred by the defendant (up to the upper limit depending on the value in dispute), including those costs incurred in filing a protective letter.
In view of these first orders and decisions, whenever it is believed that provisional measures might be requested by a patent proprietor before the UPC, defendants should consider preparing and filing a well substantiated protective letter presenting both non-infringement and invalidity arguments, together with facts and evidence supporting them. Such a defensive strategy could also let the defendant at least identify facts and collect evidence that could be useful in the subsequent main proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.