IP Insights: Protective letters (2024)

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Hello everyone. Today, Christof Karl and I will talk about “protective letters”. They are a defensive tool in preliminary or provisional proceedings, with growing importance due to the Unified Patent Court.
A protective letter is basically a pre-emptive statement of defense: it includes facts and arguments which would normally be submitted in reply to a request for provisional or preliminary measures, so mainly non-infringement arguments or arguments against validity, and it is filed in advance, if a company suspects that the patent owner will attack them with such a request.
Christof, could you explain what the purpose of a protective letter is?
In many European jurisdictions, preliminary injunctions or other provisional measures, such as border seizures or inspection orders, can be granted by the court without hearing the defendant, so the defendant does not have the chance to present his arguments. And the protective letter should precisely prevent that. The defendant wants to present arguments in the protective letter that make the judges doubt whether they can issue a preliminary injunction and schedule an oral hearing.
So Michael, you said in the beginning that protective letters have a “growing importance” - what did you mean by that?
Protective letters are not available everywhere. They have been available for a long time in Germany, Spain, and the Netherlands. Given that ex parte court orders are very rare in Spain and the Netherlands, they have mainly been used in Germany.
But they have become important now in all UPC member states, since the possibility of ex parte court orders is provided in the UPC law, as well as the possibility to file protective letters as a counter-measure. So, whereas previously parties acting for instance in Italy or in France did not have to think about filing protective letters, they should do so now.
However, ex parte preliminary injunctions are granted only in specific situations. So, what do you think - under which circumstances would it be recommendable to file a protective letter?
Two aspects should be looked at:
First of all, it should be a situation where the court is really willing to grant a preliminary injunction, i.e. in urgent cases. The primary example for that would be trade show cases where the defendant exhibits allegedly infringing products. If a court schedules an oral hearing and only afterwards issues a preliminary injunction, the trade show is over, the injunction comes too late. Other examples include situations where a market entry by the defendant would significantly reduce sales of the patent owner, e.g., in the pharma industry, or if it is a fashion product - I don’t know if you are old enough to remember the Tamagochi, or the fidget spinner.
The other aspect is that there should be at least reasonable arguments that you can put in such a protective letter because if the protective letter is too weak, it might even support the judges in their decision to grant a preliminary injunction ex parte.
Indeed, in the first case decided by the UPC, between Swiss e-bike manufacturers myStromer and RevoltZycling, the Defendant exhibited the accused e-bikes at the Eurobike trade fair. And the Dusseldorf Local Division granted an ex parte preliminary injunction on June 22, 2023, although - or maybe because - the Defendant had filed a protective letter, which apparently was rather weak.
So in this case, the Defendant was correct in assuming that the patent owner would move for an ex parte preliminary injunction, but the protective letter was not strong enough.