Known in some national European jurisdictions, unknown in others, the UPC implements a defensive measure against provisional measures that might be requested by a patentee: the protective letter.
Provisional measures that may be requested by a patentee against an alleged infringer include: prohibition of the continuation of the alleged infringement (A62(1)UPCA) and seizure or delivery of the products suspected of infringing a patent so as to prevent their entry into, or movement, within the channels of commerce (A62(3)UPCA).
These provisional measures may be granted without hearing the defendant (A62(5)UPCA in combination with A60(5)UPCA).
These measures may be highly detrimental to the business of a possible defendant, e.g. where a product exhibited on a trade fair is to be removed or stocks are seized.
In order to reduce the likelihood of being subject to protective measures, in particular without being heard, the Rules of Procedures provide the possibility of filing protective letters (R207 RoP):
“(1) If a person entitled to start proceedings under Article 47 of the Agreement considers it likely that an Application for provisional measures against him as a defendant may be lodged before the Court in the near future, he may file a Protective letter.”
The protective letter essentially contains the reasons why the (future) defendant believes that the provisional measures requested by the applicant are not justified, or at least not justified to be granted without hearing the defendant.
The protective letter has to be filed with the Registry in the language of the patent (R207 2.), and is subject to payment of a corresponding fee.
Upon an application for provisional measures, the protective letter will be forwarded to the applicant and to the panel or judge handling the application for provisional measures.
When exercising its discretion whether to inform the defendant, to summon the parties to an oral hearing, to summon the applicant to an oral hearing without the presence of the defendant, any Protective letter filed by the defendant should be taken into account by the Court. The Court shall in particular consider summoning parties to an oral hearing if a relevant Protective letter has been filed by the defendant (R209-2(d)).
In principle, the protective letter is not public and is not made publicly available on the Register until it has been forwarded to the applicant. This does however not mean that the protective letter will be published ex-officio upon the transmittal to an applicant, as Rule 262 1 (b) requires that written pleadings and evidence shall be only available to the public upon reasoned request after a decision is taken by the judge-rapporteur after consulting the parties , limiting the publication of content of the Register.
The lifespan of a protective letter is 6 months, and it can be renewed without limitation for periods of 6 months subject to payment of a fee (R 207 (9.)).
In case a protective letter is on file, the applicant of provisional measures has the possibility to withdraw its application for provisional measures (R209 (5.))
The applicant for preserving evidence (“saisie”) has an identical possibility, namely if the patent the subject of the application preserving evidence is also the subject of a Protective letter, the applicant may withdraw the Application pursuant to paragraph 5 (R 194(6)). In this case, the defendant will not be informed of the application for preserving evidence.
To conclude, a protective letter may reduce the risk of facing provisional measures granted by the UPC, in particular without being heard beforehand.