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16 May 2017
A protective letter(1) is a form of anticipatory defence against ex parte interim measures.(2) It aims to present the defendant's arguments to the court before an ex parte interim measure is adopted and, if possible, prompt the court to call for a hearing before adopting the interim measure, instead of adopting it without hearing the defendant. In other words, protective letters aim to make granting ex parte interim measures more difficult or enable the defendant to avoid them altogether.
A protective letter is typically filed by a party that believes that an IP rights holder is going to request ex parte interim measures against it. By filing the protective letter, defensive arguments are submitted to the court before the rights holder applies for such measures.
The previous Patent Act(3) did not provide for protective letters. However, the Barcelona commercial courts occasionally allowed protective letters in cases of potential requests for ex parte interim measures regarding IP rights infringements.(4) These courts treated protective letters as non-contentious proceedings.
In addition, the Barcelona commercial courts have approved a specific agreement that remains in force only during events such as the Mobile World Congress.(5) This agreement provides for several measures, including the possibility to file protective letters against plausible requests for ex parte interim measures regarding potential IP rights infringements.
Until April 2017, Spanish judicial practice showed that the key features of protective letters were as follows:
Conversely, the Madrid commercial courts rejected this instrument on the understanding that protective letters could not be admitted because they were not admitted in Spanish law.(8) The absence of regulation for issues such as where the applicant must be served with a protective letter and when it must be considered would pose many practical problems. In addition, the Madrid commercial courts understood that accepting protective letters would be contrary to the adversary principle, given that an IP rights holder has the right to request ex parte interim measures before a court that has not been conditioned in any way (ie, a rights holder has the procedural right to be heard before the defendant makes allegations that may influence the court).
The new Patent Act entered into force on April 1 2017.(9) Article 132 thereof provides for protective letters, holding as follows:
Protective letters have received legal recognition in Spain in relation to IP matters.(11) Could they be admitted in relation to unfair competition matters? With the new Patent Act, it could be construed that protective letters are among the instruments that are applicable to unfair competition cases.(12) However, further clarification from the competent patent courts is required.(13)
For further information on this topic please contact Sara de Román Pérez at Pérez-Llorca by telephone (+34 91 436 04 20) or email (firstname.lastname@example.org). The Pérez-Llorca website can be accessed at www.perezllorca.com.
(2) Under Spanish law, provisional measures may be applied for and granted ex parte, without hearing the defendant, where the applicant so requests and can provide evidence of urgency or likelihood that the redress sought will be put at risk if the other party is heard.
(5) This agreement was approved in 2015 and has been renewed annually. It has been applied in other events such as Alimentaria (2016), which brings together a large number of IP rights holders (ie, patent, utility model, trademark, industrial design and copyright owners).
(12) Article 36 of the Unfair Competition Act states that Articles 129 to 132 of the Patent Act are applicable in unfair competition cases, and this reference has not been modified following the new Patent Act's entry into force. However, Article 36 is referring to pre-trial procedures to investigate the facts of a case, and not protective letters, when making said reference to Articles 129 to 132 of the Patent Act.
(13) Since the entry into force of the new Patent Act, the only courts with jurisdiction in patent matters are Barcelona Commercial Court Numbers 1, 4 and 5, Madrid Commercial Court Numbers 7 to 10 and Valencia Commercial Court Number 2.
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