UPC Protective Brief – why implementers should consider it

Preliminary injunctions (PI) can be ordered – as under German law – without hearing the defendant (ex parte) (Rule 212 of the Rules of Procedure of the UPC). 

Protective brief can mitigate the risk of an ex parte PI

The risk can only be reasonably countered by filing a UPC protective brief (Rule 207 of the Rules of Procedure of the UPC). Therefore, preparing a UPC protective brief and filing it in due time on June 1, 2023 should be considered in suitable cases (if necessary, in addition to the protective briefs filed so far regarding Germany). A UPC protective brief will be kept in the court’s custody for 6 months similarly to a German protective brief, and PI applicants will only learn about it when they actually file a UPC preliminary injunction request. 

The following additional reasons speak for the filing of UPC protective briefs:

• Above all, the UPC judges from Germany and the Netherlands are encouraging the lively use of interim measures and it is expected that those will be handled generously for the patent owner, especially with regard to the question of urgency in terms of time. 
• According to the most recent case law of the CJEU, every examined and granted patent is presumed to be valid and can therefore also be enforced by way of interim relief (successful first instance validity proceedings are not required from the perspective of EU law).
• Preliminary injunction proceedings are planned to be completed in just three months, even if a date is set for oral proceedings. The time limit regime will be extremely strict, and extensions of the time limit will hardly be considered. This leaves little time for a proper defense.
• A Europe-wide preliminary injunction within a short period of time is a business risk that cannot be overestimated.
• According to the case law of the CJEU, damages caused by an enforced preliminary injunction, even if lifted later, are not automatically available in the full extent of the losses suffered. 
• The costs of filing a UPC protective brief are comparatively low, the court fee is EUR 200.

For more information about the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC page.