8 November 2017

The protective letter

In cases concerning patents and plant breeders' rights it is possible to petition the court to be heard in the event of ex-parte proceedings or if an attachment is imposed. This petition is also known as a 'protective letter', which I will explain in more detail in this article.

One of the most important legal principles is the right of both sides to be heard. When a court is petitioned to impose an attachment (possibly for the purpose of preserving evidence) or an ex-parte injunction, the party against which the petition has been filed will not usually be heard by the court. The underlying idea here is that if that party is heard first, there is a risk that he will conceal evidence or sell the infringing (or potentially infringing) goods. Although it takes time to hear both parties, once a request for an attachment to preserve evidence or an ex-parte injunction has been granted, it is possible to take very rapid action, with the element of surprise.

This rapid action can be hindered to some extent in cases concerning patents and plant breeders' rights by filing a protective letter (letter raising an objection prior to interim measures). In the protective letter you respond proactively to the other party's arguments. For example: the other party asks the court to grant leave to impose an attachment to preserve evidence on the administration records and an ex-parte injunction on the trading of a product that is alleged to be infringing his patent rights. Requests such as these are usually granted without counter-arguments. However, the protective letter argues that there has not been a patent infringement and why the court should turn down the request. These arguments are usually raised in preliminary relief proceedings for the lifting of an attachment or a statement of defence. Instead of this, the arguments are entered into the proceedings sooner, before the other party can impose the attachment to preserve evidence or an ex-parte injunction is granted. This makes it possible for a party to protect himself against claims of a third party by means of a letter anticipating its arguments, hence the term 'protective letter'.

The protective letter should therefore name the party expected to initiate the claims. The protective letter remains valid for six months and can be extended thereafter. If a party files a request to impose an attachment to preserve evidence and an ex-parte injunction, the court will take into consideration r the arguments given mentioned in the protective letter. Filing a protective letter does not lead to an obligation to summon that party and to hear both parties. The court can grant or reject the request to impose an attachment to preserve evidence and an ex-parte injunction, or opt to hear the other party before doing so.

Until recently it was possible to file a protective letter for any intellectual property right. The District Court of The Hague has now restricted this to patent and plant breeders' rights. The court does not consider any existing protective letters relating to other rights in its judgment.

In the event of an imminent dispute concerning patent or plant breeders' rights, it is therefore worth having a protective letter drawn up to ensure that the court considers the counter-arguments in its judgment. This reduces the chance of a successful ex-parte injunction or an attachment to preserve evidence.