The preventive writ (protective letter) and the potential necessity in filing one by the future defendant of preliminary injunction proceedings on patent rights infringement
Autor: Sonia Sarroca y Oriol Ramon
“However, we would like to draw attention to the fact that, if this Section had been provided with a preventive writ by the defendant, it would have allowed us to weigh accurately the legal positions of both parties …“. This warning was made to the defendant by the Commercial Court No. 5 of Barcelona, in its recent Order dated December 12, 2017 (Fourth Legal Ground) Order dated December 12, 2017 when it decided to lift the preliminary injunction measures that had previously been imposed on him ex parte.
The question we face is whether to interpret the Court’s warning as a need for the future defendant who wants to avoid ex parte preliminary injunction measures in having to submit a protective letter explaining his position of non-infringement to the Court.
In our opinion, there is no answer to this question that serves as a common denominator for all cases.
The new Patent Act 24-2015, of July 24, that came into force on April 1, 2017, introduced the figure of the preventive writ to which the Commercial Court No. 5 of Barcelona refers. Despite of the recent application of this act, in practice, the Commercial Courts of Barcelona already admitted preventive writs, taking special relevance in the frame of fairs like the Mobile World Congress, where a quick answer in the adoption of preliminary injunction measures on the alleged infringing products exhibited in said fairs was requested to the Judges.
In other jurisdictions, such as in Germany, a similar preventive writ system exists (protective letter), by means of which the possible future defendant in preliminary injunction proceedings on patent rights infringements can explain to the Court, in advance, its non-infringement position. One of the characteristic notes of the protective letters is that they are not revealed to the patent holders.
In this sense, Article 132 of the new Patent Act, provides that “[t]he person who foresees that ex parte preliminary injunction measures will be requested against him, may lawfully appear before the judicial body or bodies which considers competent to know of said potential measures and justify his position by means of a preventive writ”. Then, a proceeding will be formed and its existence will be communicated to the patent holder, in which he may file a request for preliminary injunction without a prior hearing within 3 months. In this way, the Court will be able to weigh all the interests at stake and decide whether it should grant the preliminary injunction measures or, otherwise, not grant them and call the parties to a hearing.
The future potential defendant files his preventive writ before the judicial body that deems competent among the specialized patent Courts, located in Barcelona, Madrid and Valencia. The patent holder must file the request before the Court that is aware of the preventive writ, unless he considers that it is not competent; in such a case he must mention in his request the existence of the preventive writ and the judicial body before which the preventive writ was filed.
We should note that the proceeding initiated with a preventive writ should not be a contradictory proceeding, because it is not the preventive writ that should be notified to the patent holder but the formation of the preliminary injunction proceeding and the order admitting the preventive writ. This makes sense because the patent holder must not reply to the preventive writ as if he were a defendant, conscious of the arguments of the potential defendant. The plaintiff is still the plaintiff and if he deems it is appropriate, he should file his request for preliminary injunction. This was recognized in the Order of the Commercial Court No. 5 of Barcelona dated January 5, 2017 Order of the Commercial Court No. 5 of Barcelona dated January 5, 2017 in its Sixth Legal Ground, with reference to the German legal system or that provided for the Unified Patent Court.
The preventive writ, however, is not a guarantee that the preliminary injunction proceeding will not be processed ex parte. In the end, the Court, in spite of the preventive writ, will be free to grant the preliminary injunction ex parte once the claim has been assessed and the request filed by the patent holder . It must also be borne in mind that the filing of a preventive writ implies the initiation of a preliminary injunction proceeding by a potential defendant that is not yet a defendant and which, on the other hand, will be communicated to the patent holder so that if he wishes to, he can file a request for preliminary injunction.
We should not interpret the statement of the Court cited in the first paragraph of this comment as a requirement that the possible defendant needs to file a preventive writ if he wants to avoid the preliminary injunction to be processed without a hearing. This would be as much as considering that every preliminary injunction request based on an infringement of a patent right must be processed ex parte as a general rule. The Civil Procedure Act, instead, establishes as the general rule that, precisely, preliminary injunction proceedings must be processed with the defendant’s prior hearing. The ex parte processing is exceptional for cases in which certain conditions are met.
Not for nothing, the position that the trial Courts are maintaining advises to analyze each case individually to assess the opportunity to file a preventive writ.