Rule 207 – Protective letter

1. If a person entitled to start proceedings under Article 47 of the Agreement considers it likely that an Application for provisional measures against him as a defendant may be lodged before the Court in the near future, he may file a Protective letter.

2. The Protective letter shall be filed with the Registry in the language of the patent and shall contain:

(a) the name of the defendant or defendants filing the Protective letter and of the defendant’s representative;

(b) the name of the presumed applicant for provisional measures;

(c) postal and electronic addresses for service on the defendant filing the Protective letter and the names of the persons authorised to accept service;

(d) postal and, where available, electronic addresses for service on the presumed applicant for provisional measures and the names of the persons authorised to accept service if known;

(e) where available, the number of the patent concerned and, where applicable, information about any prior or pending proceedings referred to in Rule 13.1(h); and (f) the statement that the letter is a Protective letter.

3. The Protective letter may contain:

(a) an indication of the facts relied on, which may include a challenge to the facts expected to be relied on by the presumed applicant and/or, where applicable, any assertion that the patent is invalid and the grounds for such assertion;

(b) any available written evidence relied on;

(c) the arguments of law, including the reasons why any Application for provisional measures should be rejected.

4. The defendant or defendants filing the Protective letter shall pay the fee for filing a Protective letter, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

5. The Registry shall as soon as practicable examine whether the requirements of paragraphs 2(a) to (f) and 4 have been complied with. If these requirements have been complied with, the Registry shall as soon as practicable:

(a) record the date of receipt and assign a number to the Protective letter;

(b) subject to paragraph 7, record the Protective letter in the register;

(c) provide details of the Protective letter to all divisions; and

(d) where an Application for provisional measures has already been lodged, inform the panel or the single judge dealing with the Application about the filing of the Protective letter.

6. If the defendant has not complied with the requirements of paragraph 2 the Registry shall as soon as practicable invite the defendant to:

(a) correct the deficiencies within 14 days of service of such notification; and

(b) where applicable, pay the fee referred to in paragraph 4.

7. The protective letter shall not be publicly available on the register until it has been forwarded to the applicant pursuant to paragraph 8.

8. Where an Application for provisional measures is subsequently lodged the Registrar shall forward a copy of the protective letter to the panel or judge appointed under Rule 208 together with the Application for provisional measures and shall forward a copy to the applicant as soon as practicable.

9. If no Application for provisional measures has been lodged within six months from the date of receipt of the Protective letter, the Protective letter shall be removed from the register unless the person who has lodged the Protective letter has prior to the expiry of such period applied for an extension of six months and paid a fee for the extension in accordance with Part 6. Further extensions may be obtained on further payments of the fee.

10. Rule 15.2 shall apply mutatis mutandis.

Case law

IPPT20231220, UPC CFI, LD Munich, SES-Imagotag v Hanshow
The applicant of an unsuccessful application for interim measures must generally also bear the costs incurred by the defendant as a result of a protective letter. This results from the fact that the filed protective brief has become part of the proceedings for the adoption of interim measures through its transmission in accordance with Rule 207.8 RoP. 

IPPT20230622, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Direct and literal infringement of the patent by the contested embodiment not substantially disputed in the protective letter. Ex parte provisional injunction regarding Germany, the Netherlands, France and/or Italy and seizure of goods suspected of infringement.