UPC Opt-outs: Act Early Or Risk Being Locked In

In a recent UPC order (Omnia v Sidel, UPC_CFI_799/2026, 7 May 2026), it was held that a UPC action may be brought in respect of a pending European patent application as it approaches grant. Such an action can render a later-filed UPC opt-out ineffective, locking the resulting patent into the jurisdiction of the UPC.

Grant Procedure at the EPO

As a European patent application approaches grant, the procedure involves (i) the issuance of a communication under Rule 71(3) EPC notifying the applicant of intention to grant the application; (ii) the applicant performing various acts to progress the application to grant, including approving the text that is proposed for grant; (iii) the issuance of a communication notifying the applicant of a decision to grant the application under Article 97(1) EPC; and (iv) publication of the mention of grant in the European Patent Bulletin. The publication of the mention of grant typically occurs around a month after the decision to grant communication on a date that is specified in the decision to grant communication. Article 97(3) EPC states that the decision to grant takes effect when the mention of grant is published in the European Patent Bulletin.

Opt-out Legal framework

Article 83(3) UPCA provides that a conventional (i.e. non-Unitary) European patent may be opted out of the jurisdiction of the UPC during a transitional period. However, this is possible only if an action has not already been brought before the UPC (Article 83(3) UPCA, Rule 5.6 RoP). As things stand, the transitional period will run until the end of May 2030, but it may be extended.

Article 32(1) UPCA provides that, absent an opt-out, the UPC has exclusive competence over various actions involving patents, including actions relating to declarations of non-infringement (DNI). The UPCA clearly distinguishes between patents and patent applications (see e.g. Article 3(c)-(d) UPCA). Thus, one reading of the statute was that the actions listed in Article 32(1) UPCA involving patents could not be initiated until a pending European patent application had reached grant to become a granted European patent.

The facts

On 3 March 2026, an action was brought before the Paris seat of the Central Division for a DNI concerning EP 4 594 194 and EP 4 624 351. As of 3 March 2026, both EP ‘194 and EP ‘351 were pending European patent applications.

After the filing of the action, the patentee filed opt-outs for EP ‘194 and EP ‘351 on 2 and 8 April 2026, respectively. It then challenged the UPC’s competence in respect of the DNI action in a preliminary objection lodged on 9 April 2026.

At the time at which the action was brought, the communication under Rule 71(3) EPC had been issued for EP ’194, but the patentee had not yet taken the action necessary for the application to proceed to grant. For EP ‘351, at the time at which the action was brought, the communication under Rule 71(3) EPC had not been issued.

Prior to the UPC issuing its order, the patentee had taken the necessary action for grant of EP ’194, and the mention of grant had been published in the European Patent Bulletin (on 22 April 2026). For EP ‘351, the communication under Rule 71(3) EPC had been issued, the applicant had taken the necessary action for grant, and the decision to grant under Article 97(1) EPC had been issued, with a date for the publication of the mention of grant set as 20 May 2026 (shortly after the date of the order).

The decision

The Paris seat of the Central Division acknowledged that a patent application is not a “patent” for the purposes of the UPCA. Despite this, it held that the UPC is competent to hear actions seeking a DNI if the patent has been granted pursuant to Article 97(1) EPC before the statement of defence is submitted (two months from service of the statement of claim for the DNI, i.e. 19 May 2026 in this case). Since, for both EP ‘194 and EP ‘351, the communication regarding the decision to grant under Article 97(1) EPC had already been issued, the Court held that it was competent to consider the DNI action.

The Court noted that, by the time of its order, the granted claim scope for both EP ’194 and EP ‘351 was settled because EP ’194 was formally granted and EP ‘351 was soon to grant. The Court also noted that allowing filing of actions prior to grant is in the interest of procedural efficiency, because it avoids the situation in which a new action is filed by the claimant immediately after (or in the case of EP ‘351, a couple of weeks after) the Court declares its lack of competence.

As the Court considered itself competent to consider the DNI action, it held that the opt-outs filed were ineffective because an action in respect of the patents had already been brought before the UPC (Article 83(3) UPCA).

The order has been appealed. It will be interesting to see whether the order will be upheld by the Court of Appeal.

The Paris seat of the Central Division limited its findings to DNIs, but it seems that the same logic could be applied to other types of action e.g. revocation actions.

It is interesting to speculate whether a prospective patentee could negate a UPC action filed pre-grant. It seems, according to the Paris Court’s reasoning, that, if an action is brought at the UPC in respect of a pending European patent application, and the patent is not granted until after the statement of defence is submitted, the UPC will not be competent to hear the action.

There are various mechanisms by which grant of a European patent application can be delayed after a communication under Rule 71(3) EPC has been issued, e.g. by using the EPO’s “further processing” provisions or by requesting amendments to the text proposed for grant. These mechanisms could allow the date of the decision to grant under Article 97(1) EPC to be pushed back until after the deadline for filing the statement of defence, leading to a lack of competence of the UPC to hear the action. It might then be possible for the applicant to subsequently proceed with opting the application out of the jurisdiction of the UPC.

Implications for opt-out strategy

For applicants wishing to opt an application out of the jurisdiction of the UPC, it is advisable not to treat the date of the publication of the mention of grant as a final available deadline for filing the opt-out request. As this case shows, doing so may, in some circumstances, allow the UPC to be seized of an action, locking the patent into the jurisdiction of the UPC.

It is possible to opt European patent applications out of the jurisdiction of the UPC from the date of publication of the application, i.e. at an early stage in prosecution, pre-examination. Given the potential risks involved in delaying an opt-out until around the time of grant, it is prudent for applicants keen to avoid the jurisdiction of the UPC to consider filing an opt-out at an earlier stage.

In this regard, it is worth noting that an early decision to opt out is not necessarily irreversible: opt-outs can be subsequently withdrawn, provided that an action has not been brought before a national court.