Articles / Published, October 3, 2023

[UPC News] Protective letters: Have you protected your back?

overview

Since the launch of the UPC system on 1 June 2023, holders of European patents and European patents with unitary effect (‘unitary patents’) have been able to bring actions against third parties in a single legal procedure.

The jurisdiction of the Unitary Patent Court (UPC) currently covers 17 EU member states, including France, Germany and Italy.

Actions brought before the UPC may include an application for provisional measures (such as a provisional injunction). As the UPC can grant such measures without a hearing, it may be advisable to file a protective letter at the UPC Registry to counter the commercial risk to your business of a temporary European-wide ban.

For more UPC news, read our analysis of the first three months at the UPC

What is a protective letter?

A protective letter is a type of preventative brief, which is filed by a party who believes that they could be at risk of being subjected to preliminary measures without first having been heard by the Court. A protective letter may contain facts, evidence (for example, relevant prior art documents) and legal arguments setting out the reasons why any request for provisional measures should be rejected.

Should you file a protective letter?

In cases where your activities could be challenged by a patent holder on the basis of a European patent, it may be worth considering preparing a protective letter and filing it at the UPC Registry, particularly if there are good arguments regarding both non-infringement and invalidity of the patent in question.

How long does a protective letter last?

Once filed at the UPC Registry, a protective letter is kept for six months, but can be renewed upon payment of an extension fee. The letter is not accessible to the public and European patent holders can only access it if they seek a preliminary measure against you.

For the latest UPC news and advice, including support on preparing and filing protective letters, speak to your Novagraaf attorney or contact us below.