UPC gives patent applicants another reason to think carefully about opt-outs

Patent applicants considering whether to opt their European patent applications out of the Unified Patent Court (UPC) system may need to make that decision earlier than previously thought, following a September 21 ruling by the UPC Court of Appeal in Sidel Participations SAS v. Omnia Technologies S.p.A.

The Court of Appeal confirmed that an action seeking a declaration of non-infringement concerning a European patent can fall within the UPC’s competence even where the patent had not yet been granted when the action was filed. Crucially for patent owners, the Court also held that an opt-out filed after such an action has been brought has no effect.

However, the Court did not finally decide whether a declaration of non-infringement can in fact be filed before the relevant European patent has been granted. It held that question to be one of admissibility, rather than UPC competence, and left it open for the further proceedings before the Central Division.

Omnia filed before the patents were granted

The dispute began when Omnia Technologies S.p.A., ACMI Labelling S.r.l. and ACMI S.p.A. filed an action before the UPC Central Division in Paris on March 3, 2026, seeking declarations of non-infringement concerning two Sidel European patent applications, EP 4 594 194 and EP 4 624 351. Neither patent had been granted when the action was filed. Sidel subsequently filed opt-out applications for the two rights on April 2 and April 8, respectively.

Sidel then raised a preliminary objection challenging the UPC’s competence to hear the case. Among other arguments, it contended that Article 32(1)(b) of the Unified Patent Court Agreement (UPCA) concerns actions for declarations of non-infringement of patents, rather than pending patent applications. The Paris Central Division rejected the preliminary objection in May, prompting Sidel to appeal.

By the time the proceedings developed further, both European patents had been granted. The Court of Appeal was therefore considering an action that had been filed while the rights were still applications but that concerned patents that subsequently came into existence.

Competence is different from admissibility

The Court of Appeal dismissed Sidel’s appeal. It held that Article 32(1)(b) UPCA gives the UPC competence over actions for declarations of non-infringement and that the relevant question is the relief actually sought in the statement of claim.

According to the Court, Omnia was seeking declarations of non-infringement in relation to the patents that would result from the two applications, rather than declarations concerning the applications themselves. The fact that the patents had not yet been granted when the action was filed therefore did not establish that the UPC lacked competence.

But the Court drew an important distinction. Whether an action for a declaration of non-infringement of a patent can be filed before grant is a question of the admissibility of the claims, rather than a question of the UPC’s competence.

That distinction mattered because the grounds on which a preliminary objection can be brought under Rule 19 of the Rules of Procedure are limited. The alleged prematurity of Omnia’s action therefore could not be used to establish a lack of UPC competence through the preliminary-objection procedure. The Court left the underlying admissibility question for the further proceedings before the Central Division.

The opt-out issue

The ruling’s potentially most important practical consequence concerns Sidel’s subsequent opt-outs. Article 83(3) UPCA allows a proprietor of a European patent or European patent application to lodge an opt-out during the transitional period, subject to the applicable requirements.

But an opt-out cannot be lodged if an action concerning the relevant right has already been brought before the UPC. The Court of Appeal held that the term “action” in Article 83(3) covers the actions listed in Article 32 UPCA, including an action for a declaration of non-infringement.

Because Omnia had filed its action on March 3, before Sidel submitted its opt-out applications on April 2 and April 8, the later opt-outs had no effect. This means that, once an action covered by Article 32 has been brought before the UPC, a subsequent opt-out cannot be used to remove that proceeding from the Court.

Why the timing matters

The decision therefore creates an important strategic consideration for applicants that would prefer their European patents to remain outside the UPC system.

An applicant does not have to wait until a European patent is granted before filing an opt-out. Article 83(3) permits opt-outs in respect of European patent applications as well as granted European patents. The Omnia v. Sidel proceedings demonstrate the corresponding risk of waiting.

If a third party brings a UPC action concerning a pending European patent application before the applicant files its opt-out, the applicant may subsequently be unable to opt out that right in order to avoid the UPC proceedings.

The timing is particularly significant because the Court of Appeal has now made clear that the fact the relevant patent had not yet been granted does not, by itself, mean that the UPC lacks competence over an action framed as a declaration of non-infringement of the patent.

But can a declaration of non-infringement actually be filed pre-grant?

That question remains open. The Court of Appeal did not establish a general rule that all pre-grant declarations of non-infringement are admissible. Instead, it expressly characterized the question as one concerning the admissibility of the instituted claims.

The first-instance Central Division had held that the UPC was competent where the patents were granted and published after the action was filed but before the statement of defense was submitted. The Court of Appeal did not overturn that approach on competence grounds, but it did not finally resolve the separate admissibility issue either.

That distinction is important for patent owners and potential UPC litigants: the decision opens the door to the procedural possibility of a pre-grant action, but does not conclusively establish that every such action will be admissible.

Implications for patent strategy

For applicants that have already decided they want to opt out of the UPC, the practical message is nevertheless clear: do not assume that you can safely wait until grant.

A competitor may seek to initiate UPC proceedings while a European patent application is still pending. If an Article 32 action is filed before the proprietor lodges its opt-out, the later opt-out will not be effective.

This gives patent applicants another factor to consider when developing their prosecution and litigation strategy. The issue may be particularly relevant where an applicant has made allegations of infringement or otherwise entered into a dispute with a potential competitor during prosecution. Such circumstances could increase the prospect of a competitor seeking a declaration of non-infringement.

The decision does not mean that every pending European patent application is immediately exposed to a valid UPC action. The admissibility of the pre-grant declaration remains to be determined. It does, however, mean that applicants should think carefully about when to opt out, rather than treating the decision as something that can safely be postponed until shortly before grant.

A new consideration in the UPC opt-out debate

The Omnia v. Sidel ruling adds another layer to the strategic calculation surrounding UPC opt-outs. Patent owners have traditionally had to weigh the advantages and disadvantages of UPC litigation against national-court proceedings, including the UPC’s broad geographic reach and the potential consequences of central revocation.

The latest ruling adds a further procedural consideration: the risk that a third party may act first. The Court of Appeal has confirmed that an Article 32 action brought before an opt-out can prevent a subsequent opt-out from taking effect, even where the relevant European patent had not yet been granted when the action was initiated.

For applicants that already know they would prefer to keep a European patent outside the UPC, the safest strategic approach may therefore be to consider the opt-out well before grant.

But the final word on whether a particular declaration of non-infringement can properly be brought before grant has yet to be written. That question remains before the Central Division.

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