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Interplay between infringement and revocation proceedings in the Unitary Patent System

18. October 2022/in Unitary Patent Court, UPC Overview

In the Unitary Patent System, the Unified Patent Court (UPC) has jurisdiction over both infringement and revocation actions. However, under certain conditions, an infringement action and a parallel revocation action may be decided by different divisions of the UPC.

In the Unitary Patent System, claims for injunctive relief and damages arising from European patents can be enforced in several EU countries through centralized infringement proceedings before the Unified Patent Court (UPC). As a defense against such infringement actions, the validity of the patent may be challenged.

The validity can be challenged (irrespectively of whether an infringement action is pending) by means of an opposition against the European patent with the European Patent Office (within the opposition period). Apart from this, it is possible to file (even after opposition proceedings before the European Patent Office have been concluded) a national revocation action against a national part of the European patent (during the transitional period of seven years after the Unitary Patent System comes into force), and a revocation action before the UPC against the Unitary Patent or the parts validated in the member states of the Unitary Patent System. In addition, when an infringement action is pending before the UPC, the validity of the Unitary pPatent can be challenged by means of a revocation counteraction.

In the German patent system the bifurcation principle applies, according to which infringement and revocation actions are decided by different courts. By contrast, in most other European patent systems one and the same court can jointly decide on both infringement and validity. In the Unitary Patent System, these two principles are combined: On the one hand, the UPC has jurisdiction over both infringement and revocation actions, while on the other hand, an infringement action and a parallel revocation action may under certain conditions be decided by different divisions of the UPC. Namely, the local or regional division before which the infringement action is pending may, after hearing the parties, decide at its discretion to:

a) proceed with both the infringement action and the revocation counteraction while allocating a technically qualified judge,

b) refer the revocation counteraction for decision to the central division and suspend or proceed with the infringement action, or

c) with the agreement of the parties, refer the entire case for decision to the central division.

Thus, in cases a) and c), infringement and validity are decided by the same division, whereas case b) corresponds in a way to the German bifurcation principle. However, whether in particular the German local divisions, which are expected to receive most infringement actions in Europe, will choose alternative b) and thus relinquish competences assigned to them, may be doubted, but it remains to be seen how the courts will handle this in practice. Furthermore, the patent proprietor will in general not agree to alternative c), because he has already decided to file the infringement action with the respective local or regional division, and the transfer to the central division could delay the case.

The situation is more complicated if an independent revocation action is pending before the central division and the patent proprietor only subsequently files an infringement action before a local or regional division against the plaintiff in the revocation action, so that the revocation and the infringement proceedings are initially separated. In this situation, the plaintiff in the revocation action (defendant in the infringement action) may file a revocation counteraction in addition to its central revocation action. The central revocation proceedings are then in general suspended, and the local or regional division may proceed at its discretion as described above. For example, it may then reconnect the two actions according to options a) or c). However, in exercising its discretion, the local or regional division must take into consideration the status of the central revocation proceedings.

Finally, infringement proceedings before the UPC may also be suspended if there are pending invalidity proceedings before the European Patent Office or a national authority, at least when a decision in the invalidity proceedings may be expected to be given rapidly.

 

Local or regional division decides at ist discretion:Revocation counteractionInfringement action
a)ProceedProceed
b)Refer to central divisionProceed
b)Refer to central divisionSuspend
c) (with agreement of the parties)Refer to central divisionRefer to central division

 

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Competence of the UPC

13. September 2022/in Special Edition UPC December 2022, Unitary Patent Court, UPC Overview

In principle, from the entry into force of the agreement, the Unified Patent Court (UPC) will have exclusive competence in civil proceedings relating to European patents, Unitary Patents, supplementary protection certificates for products protected by such patents and European patent applications. The scope of exclusive competence includes, inter alia, actions for actual or threatened infringement and related defenses, actions for a declaration of non-infringement, actions for provisional and protective measures, actions for injunctions, actions for damages, actions for revocation and counterclaims for a declaration of invalidity, and actions against decisions of the European Patent Office relating to administrative tasks.

For actions relating to patents or supplementary protection certificates that do not fall within the exclusive competence of the court, the agreement states that national courts of the contracting member states continue to be competent.

During a transitional period of seven years from the entry into force of the agreement, national courts and the UPC are on an equal footing, and during this phase there is therefore no primacy of the UPC.

In addition, until one month after the end of this transitional period at the latest (which can be extended by a further seven years), patent proprietors have the possibility to exclude the exclusive competence of the UPC by means of a so-called “opt-out declaration”. This declaration can be withdrawn and thus the exclusion of the competence of the UPC can be cancelled. There are no fees for the opt-out declaration and it must be made by all patent proprietors jointly or by their representatives to the UPC’s office uniformly with effect for all states. Although it can be made at any time during the transitional period, it can no longer be made once legal proceedings relating to the patent have been instituted before the UPC. To take account of this circumstance, patent proprietors already have the possibility to make an opt-out declaration for their existing European patents and European patent applications during the so-called “sunrise period” before the entry into force of the agreement and thus before such proceedings can be initiated by a third party. The start of this period will be announced by the authorities and will last approximately three months.

If the patent proprietor makes an opt-out declaration, the European patent in question will no longer fall within the jurisdiction of the UPC and any litigation concerning that patent will continue to be brought before the national courts.

Any Unitary Patent or bundle patent for which the patentee has not made use of the opt-out declaration is subject to the jurisdiction of the UPC and must be heard by it.

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Structure and functionality of the UPC

12. September 2022/in Special Edition UPC December 2022, Unitary Patent Court, UPC Overview

The Unified Patent Court (UPC) consists of a Court of First Instance, a Court of Appeal and a Registry.

Court of First Instance

The Court of First Instance comprises a central chamber sitting in Paris and a division sitting in Munich, as well as several local and regional chambers. All the panels of the Court of First Instance are multinational and composed of three judges.

The panels of the central chamber shall be composed of two legally qualified judges who are nationals of different Contracting Member States and one technically qualified judge. Each panel hearing actions against decisions of the European Patent Office relating to administrative tasks shall be composed of three legally qualified judges who are nationals of different Contracting Member States. The parties may agree that their dispute shall be decided by a legally qualified judge sitting as a single judge.

The panels of a regional chamber shall be composed of two legally qualified judges who are nationals of one of the Contracting Member States concerned and one legally qualified judge who is not a national of one of the Contracting Member States concerned. In addition, each panel of a local or regional division may, at the request of a party or on the panel’s own initiative, be assigned an additional technically qualified judge who has appropriate qualifications and experience in the technical field concerned.

The seat of the local division established at the request of a Contracting Member State shall be designated by the Contracting Member State in whose territory it is established. Each Contracting Member State may have no more than four local chambers. German local chambers shall be established in Dusseldorf, Hamburg, Mannheim and Munich.

A regional chamber shall be established for two or more Contracting Member States at their request. Those Contracting Member States shall designate the seat of the Chamber concerned. The regional chamber may meet at different places.

For actions for revocation, negative declaratory actions and actions against decisions of the European Patent Office relating to administrative tasks the central chamber has the exclusive competence. Infringement actions and requests for interim relief are to be brought before the local or regional chambers.

Court of Appeal

The Court of Appeal shall have its seat in Luxembourg. Each panel of the Court of Appeal sits in a multinational composition of five judges. Of these, three are legally qualified and nationals of different Contracting Member States and two are technically qualified, the latter being assigned to the panel from a pool of judges. In the case of actions against decisions of the European Patent Office relating to administrative tasks, the panel is composed of three legally qualified judges who are nationals of different contracting member states. Each panel of the Court of Appeal shall be chaired by a legally qualified judge.

Registry

A Registry shall be established at the seat of the Court of Appeal, headed by the Registrar, to perform the functions assigned to it by the Statute. The register kept by it shall be public. Annexes to the Registry shall be established in each chamber of the Court of First Instance.

 

 

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Costs and reimbursement in the new UPC system

8. September 2022/in Unitary Patent Court, UPC Overview

The parties to a proceeding must pay court fees for the proceeding. These shall be paid in advance unless otherwise specified in the Rules of Procedure. If a party has not paid the prescribed court fees, it may be excluded from further participation in the proceedings. The court fees for proceedings before the Unified Patent Court (UPC) consist of a fixed fee and a fee based on the value in dispute.

Court fees

For infringement actions and for actions for declaration of non-infringement, the fixed fee is EUR 11,000 and the fee depending on the value in dispute is between EUR 2,500 for a value in dispute of EUR 500,000 to EUR 750,000 and the maximum of EUR 325,000 for a value in dispute of EUR 50,000,000. The fixed fee for applications for interim measures and for nullity counterclaims is also EUR 11,000 each and the fixed fee for nullity actions is EUR 20,000. The upper limit for the fee dependent on the value in dispute for nullity counterclaims is EUR 20,000. The fixed fee for appeals is usually EUR 11,000.

Attorney fees

As in Germany, in proceedings before the UPC the costs of the legal dispute and other costs incurred by the prevailing party are generally reimbursed by the losing party. However, reimbursement only takes place up to a fixed upper limit if the costs are reasonable and appropriate and if there are no grounds of equity to the contrary. The upper limit of the costs to be reimbursed by the losing party in one instance is EUR 38,000 for a value in dispute of EUR 250,000 and EUR 2,000,000 for a value in dispute of more than EUR 50,000,000. In the event that a party is only partially successful or in the event of exceptional circumstances, the court may order that the costs be allocated on an equitable basis or that the parties bear their own costs. If a party has caused unnecessary costs to another party or to the court, it shall bear such costs itself.

Security deposits

In addition, at the request of the defendant, the court may order the plaintiff to provide reasonable security for the costs of the litigation and the defendant’s other costs.

 

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Jurisdiction of the UPC

8. September 2022/in Unitary Patent Court, UPC Overview

With regard to jurisdiction of the Unified Patent Court (UPC), a distinction must be made between the international jurisdiction of the UPC, the subject-matter jurisdiction, the jurisdiction in relation to courts of Member States with regard to non-unitary European patents, and the jurisdiction of the individual chambers of the Court of First Instance among themselves.

International jurisdiction

With regards to international jurisdiction, the most important aspect in practice is that a potential defendant does not have to be domiciled in a contracting member state in order to be brought as a defendant for patent infringement (Unitary and non-unitary European patent) before the UPC. Instead, it is also sufficient that the patent infringement has occurred or has an effect in the territory of a contracting member state.

Subject-matter jurisdiction

With regard to subject-matter jurisdiction, the most important aspect in practice is that the UPC has jurisdiction for infringement actions, provisional measures (in particular injunctions, preservation of evidence, etc.; see the corresponding overview), actions for declaratory judgment of non-infringement and nullity (revocation) actions arising out of or against Unitary Patent(s) and non-unitary European patent(s) as well as SPCs relating thereto (however, with exceptions for non-unitary European patents during a transitional period, see below). The UPC also has jurisdiction if the defendant asserts the FRAND objection in infringement proceedings (in which case however the UPC must apply EU law and the case law of the ECJ and, if necessary, also refer questions on EU law thereto if necessary).

The UPC hears counterclaims for revocation regardless of whether an opposition to a (non-)unitary patent has been filed with the EPO. The UPC may conduct the revocation action in parallel or suspend the proceedings. However, if the EPO declares a patent invalid (with binding effect), this is also binding on the UPC.

Jurisdiction within UPC

All actions have to filed with the Court of First Instance. The decisions of the Court of First Instance may be appealed to the Court of Appeal. The Court of Appeal is also the last instance. The Court of First Instance is divided into the central division and the so-called local and regional divsions. The contracting member states each have one (or, in the case of Germany, four) local chamber(s); several contracting member states can also join together and form a joint regional chamber instead. As a rule, infringement actions have to be filed with the local or regional chambers and can only be filed with the central chamber in certain constellations. See the article on forum shopping for the options available.

Relation to national courts

National courts, on the other hand, will continue to have jurisdiction over disputes concerning the ownership of both Unitary and non-unitary patents and employee invention rights thereto. Apart from that, national courts of course continue to have jurisdiction for actions re national patents and utility models.

In the case of non-unitary European patents, the patent proprietor can declare the so-called “opt-out” three months before the UPC starts its operation (so-called “sunrise period”) until presumably seven years after this date (provided that the patent was also granted or applied for at least within this period and provided that no action concerning this bundle patent is pending before the UPC). If the opt-out is declared and not withdrawn, this patent is permanently withdrawn from the jurisdiction of the UPC. As before, infringement proceedings and (after expiry of the opposition period) opposition proceedings are then to be conducted in the countries where the bundle patent is validated.

If the opt-out is not declared, plaintiffs have a right of choice with respect to bundle patents whether to go before a national court or before the UPC. At present, it is still disputed in the literature to which types of proceedings this right of choice extends (only infringement and nullity actions or also negative declaratory actions and provisional measures) and to what extent the exercise of this right of choice blocks the possibility to go before the respective other court. It is predominantly assumed that subsequent proceedings which territorially do not have the same subject matter as earlier proceedings remain possible or that the respective territory is to be excluded (e.g. if an infringement action is brought before the UPC, invalidity counterclaims can still be brought before national courts; if an infringement action is brought before a national court, an infringement action concerning the remaining validations can be brought before the UPC, etc.). However, it remains to be seen how the UPC and the national courts will position themselves in this regard.

 

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Applicability and enforcement of decisions of the UPC

8. September 2022/in Unitary Patent Court, UPC Overview

Decisions of the UPC are directly applicable in all contracting member states. Decisions based on non-unitary European patents are of course only applicable in member states in which the patent is validated at the time of the decision. Still, in both cases, the territorial applicability goes beyond individual states, making cross-border injunctions the norm.

Provisional enforceability

Furthermore, already decisions of the first instance of the UPC are enforceable and their enforcement can only be predicated on a bond. The appeal court can stay the enforceability at its discretion. However, it has to be noted that enforcement of first instance decisions can incur claims to damages for the defendant, in case the decision is overruled on appeal.

A decision can be enforced as soon as it has been served to the defendant (and enforcement has been formally announced).

Delivery by email

Service delays are not to be expected as defendants have to supply an email address for service (and risk a default judgement if they fail to do so).
Translations are only required insofar as enforcement measures have to be taken by the authorities of the member states (see below). However, in this case translations have to made for every respective state.

Penalty payments

In case the defendant does not comply with an injunction or an order to render information, the UPC can impose penalty payments (which are to be payed to the UPC). The collection of such payments and other monetary claims (in particular damages and reimbursement of costs) however has to be done nationally together with the competent authorities in the respective states, and under the applicable national rules with regards to scope. For example, Germany allows for seizure of property, bank accounts and claims against third parties.

 

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Forum Shopping

8. September 2022/in Unitary Patent Court, UPC Overview

In the context of actions for infringement before the Unified Patent Court (UPC), forum shopping means the possibility for a plaintiff to choose a particular division out of several competent divisions for his action.

Reasons for forum shopping

Reasons for choosing one division over another are based on the wiggle room and discretion that the rules on procedure and material laws governing the UPC provide the judges with, which can result in (statistically significant) differences between the divisions in how they decide on various issues and how they conduct the proceedings. Examples would be: win/loss ratio; how often court experts are appointed; how often counterclaims for revocation are referred to the central chamber and a corresponding infringement action is stayed; how often infringement actions are stayed in light of pending opposition proceedings before the EPO; how often local chambers request technically qualified judges in infringement actions; chances for success of applications for provisional measures.

Forum shopping at UPC

The rules governing the UPC allow forum shopping to a certain extent. Actions for infringement can be brought before a local and regional division of a contracting member state if infringement takes place in said state (e.g. sale of goods). Further, actions for infringement can be brought before a local and regional division of a contracting member state if defendant has its seat in said state. In case the defendant does not have its seat on the territory of any contracting member state, the action can also be brought before the central division. In case a contracting member state has several local divisions (for now only Germany, with four divisions), an action can be brought before any of these divisions (in case infringement takes place on the territory of that state).

For example: a defendant has its seat in Austria, infringement takes place in Germany, Italy and France. The action for infringement can then be brought be before the one of the local divisions in Vienna, Munich, Dusseldorf, Mannheim, Hamburg, Milan and Paris.

Since the divisions of the UPC, in principle, render decisions for the territories of all contracting member states (see the corresponding article), plaintiffs can take advantage of the peculiarities of the divisions in cases where several divisions are competent (as in the above example).

 

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Provisional measures and orders

8. September 2022/in Unitary Patent Court, UPC Overview

In patent infringement proceedings before the Unified Patent Court (UPC) a claimant can, in particular, be awarded claims to injunction, information and damages as well as recall and destruction. However, the rules governing the UPC provide provisional measures and orders which can be applied for before or besides main infringement proceedings. “Provisional” means that decisions of the court can be obtained quicker than in main proceedings, but are only preliminary, meaning that they can be overruled in case of a differing result in the main proceedings.

Provisional measures and orders can be put in three categories:

Categories of provisional measures

1st Category – temporary order regarding main suit

The first category would be measures which preliminary and partially award claims, namely an injunction (with the respective consequences in case of a breach) and seizure of potentially infringing products.

2nd Category – order preparing main proceeding

The second category would be orders which allow a potential claimant to assess the chances of success of an infringement action, namely orders for inspection, e.g. the inspection of a potentially infringing machine together with a court-appointed expert.

3rd Category – safeguards for monetary claims

The third category would be measures with which monetary claims from an (future) infringement proceeding, in particular claims to damages and reimbursement of costs, can be secured through the seizure of assets.

Provisional measures and orders can be applied for before or besides main infringement proceedings. However, if no main action is initiated, defendant can demand that a main action is initiated or provisional decisions by the court be lifted alternatively.

Timeline of the procedure

The duration of the proceedings re provisional measures and orders can vary between hours or days and weeks or months. This primarily depends on whether the court gives the defendant the possibility to reply to an application for such measures in writing and whether an oral hearing is scheduled. This in turn is primarily dependent on the degree with which infringement and validity can be assumed and how urgent the measures are for the applicant (can he e.g. claim that without a quick decision he would incur heavy and irreparable damages?).

Protective letters

Potential defendants can deposit a protective letter at the court, meaning a written summary of their presumed defense. A protective letter thereby ensures that the court hears the defense and thus rejects the application (or at least gives the defendant the chance for further submissions) if a defendant assumes that such an application could be filed.

 

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UPC: Case management and proceedings

8. September 2022/in Unitary Patent Court, UPC Overview

The written procedure of the, in practice, most important proceedings, actions for infringement of patents together with counterclaims for revocation and applications to amend, is illustrated in the Rules of Procedure:

Graphic

 

 

The following additions should be noted:

Other procedures

Preliminary objections regarding competence of the court and procedural language must be raised within one month after service of the infringement action.

The chart further does not show the ability of the court to stay proceedings. In practice, relevant grounds for a stay of the proceedings can be separate actions for revocation before the central division (for which the three-month deadline, which applies to counterclaims for revocation, does not apply) and/or opposition proceedings before the EPO. Also of relevance are cases in which a local division refers a counterclaim for revocation to the central division and stays the infringement action (instead of continuing it).

Deadlines

Furthermore, the deadlines shown in the chart are not binding, but can be extended given a respective application from a party. One example would be the case where defendant argues that he cannot meet the three-month deadline for the counterclaim for revocation (e.g. because the prior art search is extensive) and does not want to be referred to a separate claim for revocation.

The written procedure is followed by the interim procedure, which is scheduled to take three months. The oral hearing shall be held after the interim procedure is closed. Ideally, the whole proceedings will take no longer than 9 to 11 months.

Interim Procedure

In the interim procedure, the court prepares the oral hearing. Together with the parties it discusses whether witnesses or court experts should be summoned. Regarding the latter, the parties can make suggestions on whom to choose and what questions to ask. After the written expert opinion has been issued, the parties can also make comments thereto.

During the written procedure, the court can manage the case, e.g., by ordering the parties to submit relevant evidence.

Decisions by the court can be appealed. The appeal proceedings mirror the proceedings in first instance, with the main difference being that for the most part no further facts re infringement and prior art can be submitted. The parties therefore have to rely on the facts and prior art presented in the first instance. Consequently, in the written procedure, each party can usually make only one submission (instead of two or three). Ideally, the appeal proceedings will therefore also take no longer than one year, meaning that a final and binding decision can be expected no later than two years in total.

 

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UPC: Enforcement possibilities for right holders

29. August 2022/in Unitary Patent Court, UPC Overview

The UPC system offers a variety of enforcement measures, including the issuance of preliminary and permanent injunctions, damage awards and orders to render information and account. The following provides for a short overview of some o these available measures:

1. Injunctions

 Where there is infringement, and where the patent is found to be valid, the UPC will have the competence to grant a permanent injunction, which (in the case of a Unitary Patent) then covers the territory of all UPC member states at the time the Unitary Patent has been granted. In case of a bundle (EP) patent, which has not been opted-out of the system, the injunction will have a more limited effect, namely in those countries, where the EP patent has been validated and maintained. Unlike in some EU states, such as Germany, the UPC are likely to exercise some limited discretion whether to grant an injunction in each individual case, in particular with regard to the principles of proportionality. There likely will be differences between the local divisions as to what extent such discretion will be applied, so that forum shopping is likely to be driven by this factor, at least in the initial phase of the system.

The UPC can grant the possibility to provisionally enforce the injunction even while an appeal is still pending. For this, the UPC may order a security to be provided by the right holder prior to enforcement of any parts of the first instance decision, including the injunction. In any case, a preliminary enforcement will subject the right holder to possible damage claims, if the decision is later revoked on appeal. 

2. Damage Claims

While the availability of an injunction will likely lead to many settlements, which may include damages, after a successful trial, the UPC also has the competence to grant damage claims and to set out a damage award that covers all sales in the territory of all UPC member states.

The UPC has the possibility to decide on infringement and damages in the same judgement, or to rule on damages at a later stage, either based on the parties’ submissions, or after defendant has laid open its books. Damages will be oriented at economic factors such as lost profit and unfair profits made by infringer, but also other factors such as the moral prejudice cased to the injured party by the infringement. It can be expected that an appropriate royalty payment, set out as a lump sum for the past infringing use, will be the most common method of calculation. 

3. Evidence Proceedings

The UPC agreements stipulate that a party alleging a statement of fact that is contested by the other party, must produce available evidence. Conversely, a statement of fact that is not specifically contested by any party shall be held to be true as between the parties. To bring the necessary evidence, the UPC allows for a large variety of means, including a hearing of the parties and/or witnesses, requests for information, production of documents, opinions by experts, inspections, comparative tests or experiments and affidavits. 

While it is generally upon the parties to obtain and produce the required evidence, the UPC may order the adverse party or a third party to produce evidence, provided that evidence lies in the control of the other party or third party and that their confidentiality interests are acknowledged and safeguarded. 

The UPC may also issue an order to inspect premises and to gather evidence. Such measures may include the physical seizure of the infringing products, and, in appropriate cases, the materials used in the production and/or the distribution of those products and the documents relating thereto as well as the inspection of premises. To obtain such order, the right holder has to present reasonably available evidence to support its infringement claim. In order to guarantee the full effectiveness of this measure, and if necessary, the order can be obtained ex-parte (i.e. without hearing the other party first). 

4. Provisional Measures

 The UPC may grant provisional injunctions to prevent any imminent infringement or to prohibit the continuation of an alleged infringement. The UPC may also order seizure or delivery up of allegedly infringing products and precautionary seizure of the alleged infringer’s property.

To grant any such measures, the UPC may require the right holder to furnish reasonable evidence to demonstrate with a reasonable degree of certainty that the patent is valid and infringed. It is not clear yet, whether the UPC will apply a presumption of validity or what is required to rebut such presumption. In general, the UPC will weigh up the interests of the parties prior to granting or refusing injunctions and will deny the measure if there is unreasonable delay in seeking the provisional measures.

The UPC may invite the defendant to object to the application for provisional measures and it may hold an oral hearing to which it may summon either both parties or only the applicant. If necessary, and particularly where any delay is likely to cause irreparable harm, the UPC  may also order provisional and protective measures ex parte, i.e. without hearing the defendant. If the UPC rejects ex parte measures, the applicant may withdraw the application and request that it remains confidential. To mitigate the risk of ex parte measures, defendant may file a protective letter. A protective letter is valid for an extendable period of 6 months and shall be forwarded to the panel or judge appointed to decide on provisional measures in relation to the patent covered by the protective letter.

 

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