Focus on European Patent Law: Defending Against a “Surprise” Preliminary Injunction

By Brent E. Matthias - September 30, 2014

You are setting up for a trade show in Munich when local authorities suddenly arrive, shut your booth down, and confiscate your exhibits. They show you what is purported to be a court order issuing a preliminary injunction against displaying products that infringe a patent owned by your main competitor.

You’ve had no advance notice of any legal proceeding. Is this action legitimate and was there anything you could have done to protect against it? The answer to both questions is “yes.”

Preliminary injunctions are available to patentees in many European jurisdictions. To obtain injunctive relief, the patentee must prove to a court that infringement is clearly established, the patent being asserted is valid, and that relief is urgently needed. While preliminary injunction actions typically proceed inter partes, with both parties appearing before the court, some may proceed ex parte and therefore only the patentee has the opportunity to appear in court. Furthermore, ex parte preliminary injunctions often do not require notice to be given to the allegedly infringing party, making possible the scenario presented above in which the exhibitor was blindsided with an injunction.

The timing of such an injunction can damage customer relationships and cause public relations problems, so how can you protect yourself against such a fate? Increasingly, the answer is by proactively filing a so-called “Protective Letter” prior to your competitor’s infringement suit. In a Protective Letter, the presumed defendant sets out defenses to the infringement claims it anticipates to be filed by a particular patentee. Should the patentee actually file an infringement action, the court will consider the defenses laid out in the Protective Letter before ruling on the request for injunctive relief. If the Protective Letter is persuasive, it will prevent the preliminary injunction from issuing.

In practice, the location and timing of a Protective Letter filing must be strategically considered. To address possible contingencies regarding the forum the patentee may choose, the same Protective Letter may be filed with many courts. For example, if the alleged infringer is attending a trade show, it may choose to file the Protective Letter in each court located within a certain distance from the site of the show. Additionally, the court may order an oral hearing on the request for injunctive relief, and therefore the Protective Letter should be filed sufficiently in advance of the trade show or other event to accommodate the hearing, such as two to six weeks.

The use of Protective Letters has been growing in acceptance throughout the European region. While the practice arguably is most well-established in Germany, other countries such as Switzerland, Belgium, and the Netherlands also accept Protective Letter submissions. More recent developments in Spain and France indicate that the practice will expand to those countries as well. Even more significantly, draft Rule 207 of the Rules of Procedure for the Unitary Patent Court sets forth a procedure for filing Protective Letters with the Court, suggesting that the procedure ultimately may be available to defend against infringement actions asserted under any issued European patent. As the use of Protective Letters becomes more universally accepted, we encourage you to consider their use prior to trade shows, product launches, or any other upcoming event that may trigger an infringement suit to minimize the risk of a debilitating preliminary injunction.

While we are based in Chicago, the professionals at Miller, Matthias & Hull LLP have developed relationships with patent attorneys across the world, granting us access to legal expertise in most foreign countries. We can leverage our global IP network to assist you with any matters abroad involving obtaining, asserting, or defending against patent rights. For more information on how we can help with your IP needs, please contact us at (312)977-9902.