Letters of note
With the Unified Patent Court (UPC) set to open its doors for business on June 1, 2023, patent-owning businesses are now putting into place carefully considered plans for structuring, and enforcing, their patent portfolios in Europe.
This includes opting out, where appropriate, their classic European Patents from the UPC’s jurisdiction, during the three-month sunrise period, which began on March 1, 2023. This article focuses instead on the options available for those that might be at risk of a UPC infringement action, either in relation to a Unitary Patent or a non-opted out classic European Patent.
Preliminary injunctions
One particular risk is a preliminary injunction in all relevant contracting member states (Art. 62 of the UPC Agreement allows a patentee to apply for a preliminary injunction before the UPC where the patent is infringed in at least one contracting member state, or where such infringement is imminent), including on an ex parte (without notice) basis (Rule 206.3 of the Rules of Procedure).
Until UPC panels start to issue a body of decisions (and those have been considered further by the Court of Appeal in some cases), it is hard to predict how individual panels may approach applications for provisional measures, though some clues may be discerned from existing practices. The remedy is a discretionary one and the court must, in exercising its discretion, “weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the granting or refusal of the injunction”, as well as any unreasonable delay (Art. 62(2); Rules 211.3, 211.4).
The CJEU decision C-44/21 (Phoenix Contact) dealt with a referral from the Regional Court of Munich regarding the compatibility of German law on preliminary injunctive relief in patent cases.
The CJEU found that, in accordance with Art. 9(1) of Directive 2004/48/EC (Enforcement of IP Rights), there is no requirement of a first instance validity or EPO opposition decision to obtain a preliminary injunction. In effect, an examined patent is prima facie assumed valid. This case should have equal impact on the UPC’s consideration of the equivalent issue.
With the fundamental right of a defendant to be heard, ex parte preliminary injunctions should remain exceptional. However, the risk of a preliminary injunction covering the UPC contracting states should not be underestimated.
Protective letters
Where a party is concerned that an application for provisional measures may be lodged against it in the UPC in the near future on an ex parte basis, it may file a protective letter (Rule 207). The concept of a protective letter is well known from German patent litigation (where it is known as a “Schutzschrift”).
Its availability recognises that the possibility of awarding provisional relief against a defendant on an ex parte basis makes significant inroads to a defendant’s fundamental right to be heard. Protective letters can also be lodged in other national courts, eg, in Switzerland, The Netherlands, Spain and Belgium).
While it should not be perceived as a tool to defend an application for provisional measures, the aim of a protective letter is to try to ensure the defendant’s arguments are before the relevant UPC panel/judge when considering an application for provisional measures made on an ex parte basis.
In exercising its discretion, the court shall in particular take into account, among other factors, any protective letter filed by the defendant and shall in particular consider summoning the parties to an oral hearing where a relevant protective letter has been filed by the defendant (Rule 209.2(d)).
