Pre-emptive brief: Dos and don’ts

In order to prevent the grant of an interim measure / a preliminary injunction without prior hearing, the potential defendant may file a pre-emptive brief with the competent court; Art. 270 CPC. The counterparty will only be served with the pre-emptive brief if he or she in fact initiates the relevant proceedings (contrary to the practice of some courts before entry into force of the CPC). 

At a recent VESPA seminar, I gained some deeper insight into the practice of the FPC with respect to pre-emptive briefs I would like to share:

  • The FPC accepts pre-emptive briefs in English language.
  • Don’t be too detailed. The FPC prefers briefs of only about 5 to 10 pages, mainly indicating a general outline of arguments why an interim measure / a preliminary injunction should not be granted. If the pre-emptive brief could already be interpreted as a complete counterstatement, this might even be counterproductive.
  • Availability to attend a hearing on short notice should be indicated.
  • What if you are not sure about the identity of the counterparty? The FPC tends to accept pre-emptive briefs not only against attacks of the registered patentee or an exclusive licensee, but also against anyone who invokes rights under the patent (e.g. an owner not yet entered into the patent register). However, be prepared that the FPC will then make available the pre-emptive brief to any such potential plaintiff you might not even have guessed beforehand.
  • A pre-emptive brief becomes ineffective six months after it is filed (Art. 270(3) CPC). If this term is not sufficient, the pre-emptive brief needs not to be filed again but can be renewed by refering to the brief already on file and paying the respective administrative fee again (Art. 2(2) CostR-PatC).

Apparently, pre-emptive briefs have already become a routine measure: About 30 were filed with the FPC in 2012.

Reported by Martin WILMING

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