The UPC Court of Appeal has upheld the first-instance decision in Omnia v Sidel (UPC_CFI_799/2026), confirming that actions can validly be commenced before the grant of a European patent application. For applicants considering an opt-out strategy, the message is increasingly clear: if you intend to opt out, do so soon after publication of your application.
Background
In our previous article, we reported on the case of Omnia v Sidel, where the CFI accepted declarations of non-infringement filed in respect of two European patent applications that had not yet granted when the action was commenced. The patent applicant subsequently filed opt-outs, but the Court held that the UPC proceedings had already been validly initiated and that the later opt-outs were invalid. Many had assumed that, absent exceptional circumstances, UPC actions could only be brought after grant of a European patent. The case suggested that the UPC was prepared to take a broader view. The decision was appealed, but the Court of Appeal has now dismissed that appeal.
What did the Court of Appeal decide?
The central argument advanced by Sidel was that the UPC lacked competence to hear a declaration of non-infringement concerning an application that had not yet matured into a granted European patent. The Court of Appeal rejected that argument. The Court held that the Omnia’s claim was for a declaration of non-infringement of the patents once granted, even though it was filed while they were still applications. Importantly, the Court drew a distinction between competence and admissibility. Whether a declaration of non-infringement of a patent can be brought before grant is not a question of the UPC’s competence under Article 32 UPCA. Instead, it is a question concerning the admissibility of the claim. The Court therefore rejected the argument that the action was outside the UPC’s jurisdiction merely because the patents had not yet granted when proceedings were commenced. The Court of Appeal also held that the admissibility of the claim – for example, whether it has been brought too early – cannot be considered as part of a preliminary objection, but only in further proceedings, by which point a valid action has been commenced.
Why does this matter for opt-outs?
The practical consequence is significant. An applicant can only validly opt out a European patent application or patent provided that no UPC action has already been commenced in relation to that right. Once a UPC action has been validly commenced, the opportunity to opt out is lost. The Court of Appeal has now confirmed that proceedings can be commenced before grant. Therefore, this increases the opportunity for a third party to “seize” the UPC forum before an applicant has filed its opt-out. In short, the window between publication of an application and grant can no longer be regarded as a safe period in which there is no risk of UPC proceedings being commenced.
Takeaway
The Court of Appeal’s decision in Omnia v Sidel significantly reduces any expectation that applicants can safely postpone opt-out decisions until grant is imminent. The UPC has now confirmed that actions can be commenced before grant and that a later-filed opt-out will not rescue an applicant from the UPC jurisdiction. For patent owners who have already decided that they do not want their European patents litigated before the UPC, the lesson is that if you intend to opt out, do so soon after publication of your application. The earlier an opt-out is filed, the lower the risk that a third party will pre-empt that choice by commencing a UPC action first.
