The answer? In short – in light of recent case law, as early as possible to ensure a valid opt out.
The decision whether to opt a European patent or patent application out of the jurisdiction of the Unified Patent Court (UPC) is now a routine consideration for many patent owners. For many applicants, the UPC is an attractive forum offering significant advantages, including the possibility of obtaining pan-European relief through a single action. However, for those whose strategy does not involve the UPC during the transitional period or are still cautious about the UPC, and therefore wish to opt out, the timing of filing that opt out is equally important.
Background
Under the UPC Agreement, proprietors of European patents and applicants for European patent applications may opt out of the UPC’s jurisdiction during the transitional period (which unless extended will end in mid-2030), provided that no action has already been brought before the UPC in relation to the relevant patent or application. Once a UPC action has been commenced, the opportunity to opt out is lost.
The UPC’s jurisdiction relates to European patents. Since the UPC opened its doors in 2023, whether the UPC would allow actions to be started before a European patent application had granted was uncertain.
New developments
In Omnia v Sidel (UPC_CFI_799/2026), the Paris Central Division considered declarations of non-infringement brought in relation to two European patent applications that had not yet reached grant. At the time the claimant commenced the UPC proceedings, both applications were still pending; one application had received a Rule 71(3) EPC “intention to grant” communication, while the other had not. The applicant subsequently filed opt outs prior to grant. By the time the Court has issued its order, a Rule 71(3) EPC “intention to grant” communication had been received on the second case and the patentee had taken the necessary action for grant on each case (the first had granted and the second had a date set for grant).
While the actions were initiated while each application remained pending, the Court nevertheless held that the proceedings had already been validly brought, meaning the later-filed opt outs could not remove the patents from the UPC’s jurisdiction. The Court’s decision was that it was competent to hear the actions because either (i) the patent was granted and published in the European Patent Bulletin after the action was filed but before the deadline to submit the statement of defence in the UPC, or (ii) the patent was granted pursuant to Article 97(1) EPC before the deadline to submit the statement of defence, even where the grant had not yet been published in the European Patent Bulletin at that time.
The decision is significant because it had been expected that, save in exceptional circumstances, a pending European patent application could not be the subject of the types of actions reserved to the UPC. The Court has now taken a different view, at least where an application is approaching grant, and accepted jurisdiction over the declarations of non-infringement.
Takeaways
For applicants whose strategy is to avoid the UPC altogether, this case highlights the risk of waiting until grant is imminent before filing an opt out. If the reasoning in Omnia v Sidel is upheld, a third party may be able to seize the initiative by commencing UPC proceedings before an opt out is filed, potentially locking the resulting patent into the UPC system. A cautious approach may therefore be to file an opt out soon after a European patent application becomes eligible for opt out following publication, rather than waiting until an allowance is issued.
However, it should be borne in mind that the final word has not yet been spoken. The decision is currently under appeal, and the UPC Court of Appeal will have an opportunity to clarify the extent to which pending applications can be drawn into the Court’s jurisdiction before grant.
For now, however, applicants who are determined to avoid the UPC may wish to take the lesson from Omnia v Sidel to heart: if you want to opt out, don’t leave it until the last minute.
While here the UPC considered itself competent because the applications were approaching grant, of course the extent to which this reasoning would apply is yet to be tested, i.e., whether pending applications further from grant could be covered, or even actions other than declarations of non-infringement, e.g. invalidity actions.
A possible defence to an action being started on a pending application could be to delay grant after such a UPC action is initiated in order to avoid the UPC’s jurisdiction (such that grant is after the deadline to submit the statement of defence, based on the Paris Central Division’s precedent). Based on the Court’s evident keenness to hear cases and to liberally assess its jurisdiction, despite the wording of the decision in this case, we cannot be certain that the Court would consider this enough to avoid its jurisdiction. Thus, even if such a strategy is pursued, it would perhaps be a bold move to not consider responding to the substantive issues in the action at the same time to cover all bases.
If you would like to discuss your UPC opt-out strategy or review your European patent portfolio, our patent team would be pleased to assist.
