Schutzschrift : "protective letter" in Germany, prevention is better than cure
If you fear that you might be the target of a preliminary injunction in Germany, you may consider filing a “Schutzschrift” (often translated into “protective letter” in English). Indeed, this proceeding makes it possible to avoid that a Germany Court issues a preliminary injunction in an ex-parte manner, i.e. without any adversarial debate.
An preliminary injunction can have very harmful consequences for a company, e.g. when the measure is executed during the launch of a product or an international trade fair.
A “Schutzschrift” can be filed by the party that wishes to guard against the risk of a preliminary injunction, their attorney at law or patent attorney (Patentanwalt or Rechtsanwalt). It is recommended that the letter be registered electronically on the centralised register held by the regional judiciary administration of the State of Hesse in Frankfurt. Thus, it will be accessible by all state tribunals during 6 months.
If a petition for preliminary injunction is brought before a German court, this court must look up into the register before making its decision. Filing a “Schutzschrift” does not, however, automatically stop a preliminary injunction. Its aim is to convince the Tribunal that it is necessary, before it takes a decision, to set up a contradictory hearing where the alleged infringer and the patent owner will be able to present their observations or that the request must be refused.
The protective letter must include arguments against infringement or validity of the patent(s). It remains confidential until the day the patent owner files the petition for preliminary injunction. The protective letter is then transmitted to the patent owner to whom the opportunity to respond is given. Depending on the arguments brought by the patent owner, the Tribunal can request that the authors of the protective letter respond in writing, grant the preliminary injunction, refuse it or set a hearing for the parties to provide further observations. The proceeding usually takes between three weeks and two months.
Although the grant conditions for a preliminary injunction vary from State to State, ex-parte preliminary injunctions remain rare in Germany. They are most often granted after an inter-partes proceeding. They can, however, be granted as the result of an ex-parte proceeding in cases where validity of the title is beyond any doubt (notably if the patent survived an opposition before the German or the European patent office) or when the patent expires soon and if the infringement is clear. They can also be granted if the alleged infringer has the opportunity to attack the validity of the patent but did not do it, or if they filed a “Schutzschrift” without challenging the validity of the patent.
Plasseraud IP Patents remains at your disposal to assist you in protecting your patents in Europe and internationally.