UPC-series: Remedies available

  • Declarations of non-infringement

This type of declaration can be lodged separately or in conjunction with an action for revocation in the Central division. In order to be lodged separately, the proprietor or the licensee needs to have an already asserted patent infringement. Another circumstance is when the plaintiff requested the non-infringement declaration in a written form, and it was refused or not provided within the designated period of time.

  • Provisional measures

Under the new UPC regime, provisional measures are also granted ex parte, that is without hearing the defense in regard to the alleged infringement (Rule 212 of the Rules of Procedure). The Court may order the following provisional measures:

  • Injunctions against the defendant;
  • the seizure or delivery up of the goods suspected of infringing a patent right so as to prevent their entry into or movement within the channels of commerce;
  • an interim award of costs;
  • if an applicant demonstrates circumstances likely to endanger the recovery of damages, a precautionary seizure of the movable and immovable property of the defendant, including the blocking of his bank accounts and other assets.

The Court can revoke the provisional measures in case of lack of action on behalf of the applicant. The defendant has also the right to demand a compensation in regard with the damage invoked by the application of the provisional measures.

  • Protective Letter

Protective letter is filed by the party that is likely to be a defendant on a provisional measures procedure in the near future and if there is the possibility to be defeated. The party states in the protective letter the reasons why the infringement is absent or why the patent is invalid or even the arguments why provisional measures should not be granted in this particular case. The protective letter gives the defendant the opportunity to be heard in the oral procedure of the provisional measures. Protective letters are a useful practice since they give a chance to the defendant to be heard by the Court in a preliminary injunction and in a cost-effective way, as their fling costs 200 euros.

Even if a patent is for the time being opted out from the UPC’s jurisdiction, it would be still considered wise to proceed filing a protective letter, since the patentee can withdraw the opt-out at any time, thus re-establishing UPC’s jurisdiction and making available the ex parte preliminary procedure again. This is even supported by Article 47(6) of the UPCA, which states: “[a]ny other natural or legal person, or any body entitled to bring actions in accordance with its national law, who is concerned by a patent, may bring actions in accordance with the Rules of Procedure”.

On the downside, the protective letters only last for a period of six months. Their force can be elongated by renewing them with a fee. In all cases, the protective letter becomes available to the patentee. This means that it should be carefully drafted, without disclosing any significant information, especially when the defendant faces a possible evidence seizure, as this information could be used against the latter.

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