Protective letters in the UPC

Protective letter

At least if the current plan holds, the Unified Patent Court will quite soon be up and running. Businesses express concerns on possible misuse of the UPC’s powerful measures for patent enforcement such as pan-European injunctions and Saisie, i.e., an order to compulsorily preserve evidence on alleged infringers’ premises. Along with these measures, however, the UPC will also provide tools aimed exactly at preventing the misuse of such orders. A so called “protective letter” will be one of the tools to that end. This tool may be unfamiliar to many readers from outside Germany, since it is mainly a German peculiarity and although available in several other European jurisdictions, such as Switzerland, the Netherlands and Belgium, it has limited practical importance there. Now, being introduced by the UPC agreement, the protective letter is expected to gain its influence throughout Europe. This post briefly introduces what a protective letter is, and discusses some special features of a UPC protective letter and some considerations for preparing protective letters. Continue reading “Protective letters in the UPC”

Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 2 of 2)

Guest post by William Wortley*

In this article we conclude our look at the potential implications of Brexit on the European intellectual property law framework. (Part 1 can be seen here).


Although copyright is less harmonised than other areas of IP, it does not escape the potential ramifications of a “hard” Brexit. The Commission has signalled its intention to push forward with the Digital Single Market (DSM) Strategy, reshaping copyright to make it fit for the digital age. Certain legislation, such as the proposed Content Portability Regulation, are expected to come into force prior to the UK’s exit from the EU, although this will not stop it potentially losing effect post-Brexit if a settlement is not achieved. The regulation allows EU consumers to access digital content provided in their Member State of residence if temporarily in another Member State. If the content localisation provisions no longer applies after Brexit, content providers in the UK will be severely hampered by having to negotiate licences in the remaining Member States. The issue is of commercial importance to UK businesses, Continue reading “Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 2 of 2)”

Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 1 of 2)

Guest post by William Wortley*

It is over six months since the United Kingdom (UK) decided to leave the European Union (EU). The uncertainty surrounding the timing and form of the exit remains undimmed and much remains unknown about how IP rights will be affected. This week’s statement on Brexit by Theresa May make it an excellent time to revisit what the referendum result could mean for IP rights.

Patent Rights

Immediately after the Brexit vote, questions were raised about the implications for the Unified Patent Court (UPC). To the surprise of some commentators, the UK announced its intention to ratify the UPC agreement on 28 November 2016, stating that the UK would continue to work with the preparatory committee to bring the UPC into force as soon as possible. Continue reading “Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 1 of 2)”

Patent litigation – Double track system vs. bifurcation system


Double track system

If you are sued by a patentee for patent infringement, one of the options you often have would be to attempt to invalidate the patent on the ground that the patent lacks patentability. The issue here is whether you can assert invalidity of the patent at issue to an infringement court, or you need to initiate a separate proceeding at a national patent office or a specialized patent court in order to argue patent invalidity. As for Japan, in addition to an invalidation proceeding at the Japanese Patent Office (Track 1), Japanese patent law allows a defendant in an infringement court to assert patent invalidity within the same proceeding (invalidity defense), and the court can judge the validity on its own (Track 2). This legal system can be referred to as a “double track system”. Examples of jurisdictions with this system besides Japan are the U.S., the U.K., France and Korea.

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Measures for preserving evidence – different requirements in UK/Germany/France/UPC and their implications


In some patent infringement cases, relevant evidence lies in the control of the alleged infringer or a third party. It may be that the patent holder cannot get access to the evidence or that the evidence may be conveniently manipulated before it is disclosed. In these kind of situations, the patent holder can potentially rely on a court to order measures for preserving evidence, which may include compulsorily entering premises, inspecting the allegedly infringing goods or process, making detailed description or even physical seizure of relevant objects or documents. To achieve a surprise effect, the court order should usually be issued ex parte.

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