Sean Hutchinson

June 2026

Background

Before the UPC opened its doors on 1 June 2023, many proprietors of European patents were wary of litigating their patents in an as-yet untested forum. To address these concerns, the authors of the UPC Agreement (“UPCA”) decided to implement a 7-year transitional period (Article 83(1) UPCA) during which it would be possible for proprietors of European patents and applicants of European patent applications to opt their European patents / patent applications out of the jurisdiction of the UPC (Article 83(3) UPCA). However, such an ‘opt-out’ can only be filed if no action has already been brought at the UPC in respect of that application / patent.

Applicants of European patent applications and proprietors of European patents intending to opt their applications / patents out of the jurisdiction of the UPC were thus advised to file their opt-outs promptly to avoid being ‘locked into’ the UPC against their will.

During the early years of the UPC, common practice has been to consider whether to file an opt-out when a European patent application publishes and, if such an opt-out is to be filed, to file it before a patent is granted on the application. This is because most court actions brought in respect of patents are not typically brought until after grant. In other words, it was typically considered ‘safe’ to opt-out just before grant because the risk of being ‘locked into’ the jurisdiction of the UPC before then seemed low.

However, the decision of the UPC’s Paris Central Division in the case of Omnia v Sidel (case reference: UPC_CFI_799/2026) suggests such an approach is not so ‘safe’ after all.

The Decision

In the case of Omnia v Sidel, the claimant started an action for a declaration of non-infringement (“DNI”) of two European patent applications under Article 32(1)(b) UPCA. That provision of the UPC Agreement confers competence on the UPC to hear “actions for declarations of non-infringement of patents and supplementary protection certificates”.

Noting that a European patent application is neither a European patent nor a supplementary protection certificate, the defendant filed opt-outs in respect of the two European patent applications and asked the Paris Central Division to decide the UPC is not competent to hear the case. In the defendant’s view, since the applications were both pending at the time the action was started, the action should have been brought at a relevant national court under Article 32(2) UPCA, not at the UPC under Article 32(1) UPCA.

The Paris Central Division, however, decided the UPC is competent to hear the case, and thus that the two opt-outs filed by the defendant were invalid. The two European patent applications had thus been ‘locked into’ the jurisdiction of the UPC against the applicant’s wishes.

The Paris Central Division addressed each European patent application separately.

Regarding the first application, the Paris Central Division noted that whilst the claim was brought while the application was pending, a Decision to Grant was issued on the application and mention of the grant had been published in the European Patent Bulletin before the statement of defence was filed by the defendant. For the Paris Central Division, this meant the UPC is competent to hear this first aspect of the case.

The situation was similar in respect of the second application, except this time when the statement of defence was filed, a Decision to Grant had been issued but mention of the grant had not yet been published in the European Patent Bulletin. Nonetheless, the Paris Central Division noted this was due to happen imminently, and thus held the UPC is competent to hear this second aspect of the case too.

Analysis and Conclusions

Given the wording of Article 32(1)(b) UPCA, the decision in this case may at first seem controversial. After all, it is immediately apparent that a patent application is not a patent or a supplementary protection certificate.

However, the explanation provided by the Paris Central Division for its decision suggests the UPC is taking a pragmatic approach in order to promote procedural efficiency. Specifically, the Paris Central Division explained that, in this case, the UPC could be confident that its eventual decision as to whether to grant a DNI would be based on “a valid and clearly defined subject matter of the proceedings” – “valid” because the EPO had decided to grant patents on both applications, and “clearly defined” because the scope of the granted claims was known. This raises questions about whether a different approach would have been taken if one or both applications had been at an early stage of examination.

For the Paris Central Division, it would have been procedurally inefficient to decline to hear this case because the claimant could then have started an identical action immediately afterwards, noting that when this decision was issued Decisions to Grant had been issued on both applications.

The Paris Central Division appeared to have little sympathy for the defendant’s argument that allowing actions to be started pre-grant deprived it of an opportunity to opt-out, holding (at paragraph 32 of the decision) that:

“The possibility of filing a lawsuit prior to the patent grant does not unreasonably impair the option to opt out. Pursuant to Art. 83(3) UPCA an opt-out is possible even before the patent is granted if the patent is still at the application stage. An opt-out is therefore admissible provided that no lawsuit has yet been filed.”

In other words, the Paris Central Division considered that if the defendant had wanted to opt its European patent applications out of the jurisdiction of the UPC, then it should have done so earlier.

The decision in Omnia v Sidel highlights that actions can be started at the UPC in respect of European patent applications, and that doing so locks that application (and thus, the resulting European patent) into the jurisdiction of the UPC. Applicants intending to opt-out would thus be wise to do so at the earliest possible opportunity (i.e., once the European publication number is known) to avoid being ‘locked in’ against their will.