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Protective letters in patent litigation cases

In July 2020, specialist IP courts began operating in Poland, and there are now five specialist IP courts operating in Poland. Only one, the Warsaw Regional Court, is competent to hear patent disputes (patent infringement, finding no patent infringement, proceedings in which an injunction is sought for the duration of patent infringement litigation). In light of this development, there is more and more discussion about whether legislation is needed in Poland to introduce protective letter, an important tool in injunction proceedings in IP, primarily patent, litigation cases.

This will be a protective letter that can be filed with a court when there is a strong possibility of IP disputes being initiated, primarily concerning patents, by the prospective adverse parties/defendants in such cases, before a statement of claim or motion for an injunction is filed with the court. The main purpose of this instrument is to present the court with which a filing for an injunction might be made with the prospective defendant’s counterarguments. The protective letter is thus intended as a means of preventing a court from granting preliminary injunction, for instance prohibiting a certain activity (production, or even seizure of products manufactured by a potential party in breach) for the duration of the case. It is common for crucial court decisions and action to occur at this stage that determine the ultimate outcome of the patent dispute.

The creation of a single court in Poland to deal with patent litigation cases makes the practice of filing protective letters more important, and in particular increases the effect they might have on the range of arguments considered by the court when ruling on an injunction in a patent case. Protective letters are a well-known and regulated instrument in Western European countries, and this includes rules on court procedures concerning protective letters of this kind when they are filed, such as whether protective letters of this kind are served to patent owners who file a motion for an injunction. In Poland, there are no procedural rules governing protective letters; they are merely an instrument known and formed in practice, to which courts’ approaches have been highly inconsistent to date. Some courts do not even take these protective letters into account when issuing an injunction, some return them, and some place them in the case files and review them. Now that a single court has been created to deal with patent cases, this has revived the debate on whether legislation on protective letters is necessary in litigation law, for instance with respect to intellectual property. As a minimum, this is also an opportunity to establish uniform practice of that court as regards this instrument. Enacting legislation, or at least formulating uniform practice of courts regarding this issue, will be especially important for entities that decide to enforce a patent in Poland, as well as for entities that decide to introduce a temporary solution or a product, where this could result in claims for patent infringement. If this happens, the latter in particular will have a more predictable legal instrument to mitigate the risk of their activities being stopped due to a court granting an injunction while not having the opportunity to consider their arguments.