October 2026 The Court of Appeal (CoA) of the Unified Patent Court (UPC) has now considered whether an action for a declaration of non-infringement (DNI) can be commenced before the relevant European patent has formally been granted.
As reported in our earlier update, the Paris Central Division concluded in May 2026 that the UPC could hear such an action where the patent was subsequently granted before the defence was filed. The Court of Appeal has now reached the same practical conclusion, although on a different basis.
CoA Confirms Jurisdiction
The proceedings concerned two European patent applications which had not been granted when Omnia filed its DNI action on 3 March 2026.
Sidel challenged the UPC’s jurisdiction, arguing that Article 32(1)(b) UPCA refers to “patents” rather than patent applications.
The Court of Appeal rejected the jurisdictional objection. It focused on the wording of Omnia’s Statement of Claim, which sought declarations of non-infringement of the “patents resulting from the applications”, rather than of the applications themselves. The action was therefore said to fall within the UPC’s jurisdiction under Article 32(1)(b) UPCA.
Importantly, the Court did not decide whether such an action is ultimately admissible where the patent has not been granted at the time of filing.
DNI Eligibility
Rule 61 RoP provides two circumstances in which a DNI may be brought.:
First, a DNI may be commenced where the patent proprietor or relevant licensee has asserted that the claimant’s act constitutes an infringement.
Second, where there has been no assertion of infringement, the prospective claimant can first apply in writing to the proprietor or licensee for an acknowledgement that the specified act does not infringe the patent, providing full particulars of the act. If the proprietor or licensee refuses or fails to provide that acknowledgement within one month, the claimant may then bring a DNI.
This second route is particularly relevant to the opt-out issue because it means that a third party does not necessarily have to wait for the patentee to make an infringement allegation before commencing UPC proceedings.
Implications for the Opt-out
The Court of Appeal made an important finding concerning the effect of the DNI on the patent proprietor’s ability to opt out.
Under Article 83(3) UPCA, an opt-out may be filed in respect of a patent application before grant. Sidel could therefore have opted out the applications before the DNI proceedings were commenced. However, because Omnia’s action was filed before Sidel lodged its opt-out applications, the action prevented Sidel from subsequently opting the patents out of the UPC’s jurisdiction.
This was relevant notwithstanding that the admissibility of the DNI itself remained unresolved.
The decision therefore reinforces the practical importance of considering an opt-out before UPC proceedings are triggered.
Conclusions
Patent proprietors who may wish to opt out a European patent application should consider doing so before making an infringement assertion or otherwise taking steps which could prompt a DNI action.
In particular, a third party can potentially trigger the Rule 61 procedure itself by requesting an acknowledgement of non-infringement and, if no acknowledgement is provided within one month, commencing a DNI action.
The Court of Appeal’s decision therefore largely confirms the practical position identified by the Paris Central Division earlier this year, however it relies less on the importance of an admissible DNI action.
