Patent infringement: understanding ex parte injunctions and protective letters
Patent disputes can be a headache for both patent holders and those accused of infringement. The EU Directive 2004/48, implemented in the Dutch Code of Civil Procedure (DCCP) in 2007, alleviates some of these problems. It provides for ex parte injunctions, allowing courts to impose injunctions without hearing the defendant. This blog examines what this means for both patent holders and alleged infringers, with special attention to protective letters as a defensive mechanism.
What's an ex parte injunction?
Under Article 1019e(1) of the Dutch Code for Civil Procedure, courts can grant an injunction without hearing the defendant (so-called ex parte). An ex parte injunction is granted by a Dutch court in urgent cases, especially where any delay could cause irreversible harm to the patent holder. This means the court can act swiftly to prevent potential infringement without giving the defendant a chance to respond initially. These injunctions can be issued even if infringement has already occurred or is ongoing, provided further infringement is imminent.
Alongside the injunction, the court might also require the infringer to formally instruct its distributors to seize selling the infringing products. Additionally, the request for an ex parte injunction could encompass other measures, like seizing evidence and providing detailed descriptions of the infringing products.
How does it work?
The process starts with the patent holder submitting a written request to the court. The court may grant the injunction immediately upon receipt of the request or after a short period, usually within a week. Alongside the injunction, the court may require the patent holder to provide a deposit or other monetary guarantee to protect the alleged infringer's interests.
Enforcement of an ex parte injunction
If an ex parte injunction is unjustly enforced, the alleged infringer can seek compensation for damages caused by its enforcement. Additionally, the court sets a reasonable deadline for the patent holder to initiate full legal proceedings, typically within six months from service of the injunction. If the patent holder fails to do so within this period, the injunction expires.
Protective letters: a shield against ex parte injunctions
Seizure of evidence and dis-continuance of sales can significantly impact a company's operations and reputation. For alleged infringers anticipating an ex parte injunction, there's a defensive tool available called a protective letter. This letter is valid for 6 months, but can multiple times be extended on request.
This letter, filed with The Hague District Court, allows alleged infringers to preemptively raise objections against the injunction, arguing either that the patent is invalid or that the product in question doesn't infringe the patent. The court will consider these objections when assessing the injunction request.
If the court is considering an ex parte request and a protective letter has been filed, the court will notify the patent holder. Upon the patent right holder's request, the court will provide a copy of the protective letter. Upon receiving this copy, the patent holder can either respond substantively or withdraw the request altogether. It's crucial for the alleged infringer to understand that their defenses may become known to the patent holder and may be used against them in future proceedings. Additionally, if the court denies the injunction request, the alleged infringer won't be aware that a copy of the protective letter was sent to the patent holder until subsequent proceedings arise.
Conclusion
Ex parte injunctions offer patent holders swift enforcement of their rights. However, this also poses a risk to alleged infringers that these rights will be enforced without giving them an option to defend themselves. Therefore, alleged infringers can use protective letters to a provide a defense against such unjustified actions. These protective letters need to be filed before a request for an injunction is submitted by the patent holder.
