This article was first published in Kluwer Patent Blog [July, 2024].

In June 2023, the UPC – at the Düsseldorf Local Division – granted its first ex parte provisional injunction (“PI”) in myStromer AG v Revolt Zycling AG (“myStromer v Revolt”), despite the defendant having previously filed a protective letter. A year on from that decision, and with only one other ex parte PI decision having been handed down, this article considers the correct approach for potential infringers to take in relation to protective letters at the UPC and provides guidance for patentees likely to face such letters.

Protective letters under the UPC Rules of Procedure

Patentees may, in principle, be granted various forms of ex parte provisional relief at the UPC, including PIs. To counterbalance this risk, potential infringers are permitted to file a protective letter setting out why a product or process does not infringe any given patent or patents, and containing arguments as to why these rights are invalid. If the patentee then files an ex parte PI application, the Court has discretion over how to proceed but it will take the protective letter into account, which may encourage it to summon the parties to an oral hearing. As such, a protective letter can be an effective tool for a potential infringer to pre-emptively argue and provide evidence as to why an application for an ex parte PI should be rejected, or at least persuade the Court that the matter should be considered at an inter partes hearing.

A protective letter may be filed with the UPC at any time by any person, though it is of course advisable to file one before taking any step that may trigger a UPC PI. At the very latest, this would be before the launch of a potentially infringing product onto the European market, but in many instances it may be advisable to file earlier. For example, in the case of pharmaceutical products, the current law in some contracting member states suggests that the trigger for a PI may be marketing activities, an application for (or the grant of) pricing and/or reimbursement, or even the grant of a marketing authorisation. It has yet to be determined what that trigger will be in the UPC – with decisions only confirming that an action must be brought urgently following the receipt of all information enabling the patentee to bring a claim. Crucially, protective letters are not made public, so the patentee will not be aware of its existence unless and until it makes a PI application…

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