In order to prevent the continuation of patent infringement, patent holders usually request the issue of a preliminary injunction, asking the Court to order the alleged infringer to cease manufacturing and selling the infringing products. If the patent holder can justify the urgency of the case, the preliminary injunction may be granted ex parte, i.e. without holding an oral hearing and hence without offering the defendant the possibility to submit arguments in defence. The effectiveness of preliminary injunctions lies not only in the speed with which they are issued and the summary examination of the entitlement of the claims being asserted, but principally in the surprise effect when they are issued ex parte.
With the aim to avoid this surprise effect, and also as a means of ensuring that the defendant’s arguments are heard in an oral hearing, a practice has developed in certain countries of lodging a protective brief (also known as “protective letter”, or as “Schutzschrift” in German). By means of a protective brief, a company fearing to be sued for patent infringement (for instance, because it has received a warning letter from the patent holder) informs the Court of the arguments on the basis of which the potential infringement claim is not founded. The main purpose of the protective brief is to prevent the issue of a preliminary injunction ex parte. The Spanish Civil Procedural Act does not expressly provide for the possibility of filing protective briefs. Nevertheless, the Barcelona Commercial Courts are recently beginning to admit them.
On January 2, 2013, the generics companies TEVA PHARMA S.L.U. and RATIOPHARM ESPAÑA S.A. (hereinafter TEVA and RATIOPHARM) filed a protective brief requesting that, if the companies G.D. SEARLE LLC and PFIZER S.L.U. (hereinafter SEARLE and PFIZER) applied for a preliminary injunction ex parte for the alleged infringement of two European patents, such preliminary injunction should only be issued after holding an oral hearing. TEVA and RATIOPHARM, which agreed upon being immediately served of any potential preliminary injunction request, had previously received a warning letter from SEARLE and PFIZER regarding the patents at issue.
The case was assigned to the Barcelona Commercial Court No. 4 which, in its decision of January 18, 2013, admitted the protective brief and set out the conditions and effects thereof. Firstly, the protective brief is considered to be an act of voluntary jurisdiction, i.e. an act requesting the intervention of a judge without reference to any pending proceedings. Secondly, the protective brief will only be effective if the preliminary injunction is applied for before the Barcelona Commercial Courts. In such a case, the preliminary injunction proceedings must be assigned to the same Court that has already admitted the protective brief. Thirdly, the admission of the protective brief does not preclude the possibility that, in view of the circumstances of the case, any future preliminary injunction is issued ex parte. Fourthly, the protective brief will only be effective if the preliminary injunction is applied for within 6 months.
The Court also stated that the admission of the protective brief must be notified to the companies having sent the warning letter, so that they may know which will be the competent Court if they decide to apply for a preliminary injunction. In this respect, on February 8, 2013 the Barcelona Commercial Court No. 4 dismissed a motion for reversal filed by TEVA and RATIOPHARM, requesting the Court that the protective brief should not be served on the potential plaintiffs since, otherwise, it would lose its surprise effect.
In March 2013, SEARLE, PFIZER and a Spanish licensee applied for a preliminary injunction against TEVA and RATIOPHARM for the alleged infringement of a European patent protecting the active ingredient of a medicine for the treatment of osteoarthritis (this was one of the two patents mentioned in the protective brief). TEVA and RATIOPHARM had already obtained a marketing authorization to sell generic medicines containing this active ingredient and had refused to wait until the expiry date of the relevant patent to put them on the market, arguing that the patent was not valid.
In its decision of March 18, 2013, the Barcelona Commercial Court No. 4 stated that, in view of the urgency of the case, the preliminary injunction should be granted ex parte. Indeed, the plaintiffs had asked the Court to issue the preliminary injunction before April 1, 2013, date from which the generic medicines could be prescribed in pharmacies. The Court affirmed that it was unable to hold a hearing before that date, despite the previous admission of the protective brief, and stated that the plaintiffs had quickly applied for the preliminary injunction, whereas the defendants had had more than 12 years to try to invalidate the patent at issue. The Court nevertheless considered the protective brief as useful, since it had allowed the Court to know the arguments of the defendants and would help speeding up their future opposition to the preliminary injunction.
Protective briefs are well-known and widely used in some jurisdictions, such as Germany or the Netherlands. They are also expressly provided for in Article 207 of the draft Rules of Procedure for the Unified Patent Court.
The Barcelona Commercial Court No. 4 has now opened the door to the filing and admission of protective briefs in Spain, although their effectiveness is restricted to potential preliminary injunctions or patent infringement cases brought in Barcelona. Moreover, the admission of a protective brief does not necessarily mean that any request for a preliminary injunction ex parte will be rejected, as it happened in the decision of March 18, 2013.
According to the Barcelona Commercial Court No. 4, the protective brief will be effective during 6 months, thus following the draft Rules of Procedure for the Unified Patent Court. Also, whereas in Germany and other countries the patent holder is unaware of the filing of the protective brief until he applies for a preliminary injunction, the Barcelona Commercial Court No. 4 has clearly stated that when such brief is admitted it must be notified to the potential plaintiff. Furthermore, if, after being aware of the protective brief, the plaintiff decides to apply for the preliminary injunction before another Court, he will have to inform such Court of the filing of the protective brief and explain the reasons why he has chosen a different jurisdiction. The competent Court will then have to evaluate the plaintiff’s procedural behaviour, and decide whether the filing of the request for a preliminary injunction in a different jurisdiction is well-grounded or not.
The admission of protective briefs by the Barcelona Commercial Court No. 4 is a relevant precedent and will surely serve to align the Spanish legal practice in patent litigation with other countries. In this respect, it is important to note that the practice of the Barcelona Commercial Courts No. 1, 4 and 5 is particularly significant because they are the only Commercial Courts in all of Spain which have been assigned all patent cases coming before the courts in Barcelona, whereas elsewhere the Commercial Courts deal with other commercial matters as well.