Court Of Appeal Update On Timing Of UPC Opt-outs

In Omnia v Sidel, UPC_CFI_799/2026, 7 May 2026, it was held in a first instance order of the Paris seat of the Central Division that a UPC action may be brought in respect of a pending European patent application as it approaches grant, and that such an action can render a later-filed UPC opt-out ineffective, locking the resulting patent into the jurisdiction of the UPC. The Court of Appeal has recently confirmed that the UPC is competent to hear such actions and that their commencement renders subsequently filed opt-outs ineffective (Sidel v Omnia, UPC_COA_90/2026, 21 September 2026). However, the Court of Appeal left open the question of whether such an action is admissible in view of its timing.

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, upon the UPC’s inception, 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 EP4594194 and EP4624351. 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 yet been issued.

Prior to the Central Division 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 DNI action

At first instance, 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 UPC was competent to consider the DNI action.

In coming to this conclusion, the Central Division 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. It was also stated 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 UPC declares its lack of competence.

The Court of Appeal came to a similar conclusion, noting that while EP ‘194 and EP ‘351 were patent applications at the time of the filing of the DNI action, the DNI action is clearly in respect of the patents to arise from the applications after grant, and so the action falls under Article 32(1) UPCA. The Court of Appeal did not mention that the relative timing of the grant date and the date on which the statement of defence is submitted is relevant.

However, while the Court of Appeal held that the UPC is competent to hear the DNI action, it noted that there is also a question as to whether the DNI action is admissible in view of the fact that the action was brought before the grant of the relevant patent applications. As such questions of admissibility cannot be raised as a preliminary objection under Rule 19 RoP, this will be considered in later proceedings.

The effect on the opt-out

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

The effect of a subsequent inadmissibility ruling on the opt-outs remains unresolved: the Court of Appeal gave no indication that the opt-out could potentially be deemed retroactively to have been effective if the DNI action is later found to be inadmissible. In this regard, it is noted that it is no longer possible to validly file an opt-out once an action has been brought at the UPC (Article 83(3) UPCA), and this is irrespective of whether the action is pending or has been concluded (Rule 5.6 RoP). Thus, for the opt-out to have been validly filed, it would seem that the inadmissibility finding would need to have the effect that the DNI action is considered never to have been brought for the purposes of Article 83(3) UPCA.

Both the Central Division and the Court of Appeal limited their findings to DNIs, but it seems that the same reasoning could be applied to other types of action e.g. revocation actions.

Could delaying grant assist the applicant?

Delaying grant so that the application remains pending as the UPC proceedings progress might strengthen an argument that a pre-grant action is inadmissible because it was brought prematurely. 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.

However, it cannot be assumed that delaying grant would restore the ability to opt the patent application out of the jurisdiction of the UPC, even if the UPC action is found to be inadmissible.

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.

Please get in touch with J A Kemp with any specific queries in relation to opt-out strategy.

We previously reported on the first instance decision in Omnia v Sidel UPC, which you can read in our news article from 7 August 2026.

J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.