A recent order from the Central Division’s main Paris seat of the Unified Patent Court (UPC) held that proceedings could validly be brought before the court in relation to European patent applications prior to grant.
This decision may have wide-reaching implications for European patent applications and the timing of when to opt out a European patent right from the jurisdiction of the UPC.
Accordingly, European patent applicants and their representatives may need to reconsider the timing of UPC opt-outs and, in particular, whether waiting until grant remains an appropriate strategy.
European patent applications and the UPC
Since the introduction of the Unitary Patent in 2023, European patent applicants have had the option of obtaining a single patent that has unitary effect in many participating states of the EU (currently 18 countries). This is instead of, or in addition to, the ‘traditional’ national validation procedure. Unitary patents fall under the exclusive jurisdiction of the UPC.
For an initial transitional period of seven years, which ends in 2030 (unless otherwise extended under Article 83(3) UPCA), it is possible for European patents and European patent applications to be opted out of the UPC’s jurisdiction as long as no UPC action has already been brought. Should an action be brought before the opt-out is filed, the granted European patent would permanently fall under the UPC’s jurisdiction.
The general advice surrounding UPC opt-outs has therefore been to opt relevant applications out of the UPC before they grant. However, the recent order may have significant implications on this strategy.
The recent decision
In Omnia Technologies S.P.A. v Sidel Participations SAS (UPC_CFI_799/2026), the Court held that a declaration of non-infringement may be validly commenced before the associated European patent has formally been granted, provided that the patent is granted by the time the statement of defence is filed.
The decision concerned two pending European patent applications owned by Sidel Participations SAS. When the proceedings were commenced, neither application had yet been granted; the first application had received a Rule 71(3) EPC (so-called ‘Intention to Grant’) Communication from the European Patent Office (EPO), and the second application was still under the EPO Search Division’s responsibility. At the time that the UPC issued its order, the grant of the first application had been published in the European Patent Bulletin but the second application was still pending; an Article 97(1) EPC ‘Decision to Grant’ Communication had been issued but publication was not scheduled until later (the decision to grant a European patent takes effect on the date on which the mention of the grant is published in the European Patent Bulletin, as per Article 97(3) EPC).
Omnia Technologies nevertheless brought actions before the UPC for both applications, seeking declarations of non-infringement. Sidel challenged the UPC's jurisdiction, arguing that the Court could not hear proceedings concerning patents that had not yet been granted. The Paris Central Division rejected that preliminary objection and the UPC accepted jurisdiction, reasoning that this avoided procedural inefficiency and the possibility of parallel proceedings before a national court followed by a transfer of jurisdiction to the UPC upon grant.
The Court identified circumstances in which it considered that a declaration of non-infringement could properly be commenced before grant. In particular, it held that the UPC could have jurisdiction where:
(i) The European patent was granted and published after commencement of the action but before the statement of defence was filed.
(ii) The European patent was granted under Article 97(1) EPC before the statement of defence, but publication of the grant in the European Patent Bulletin had not yet taken place.
In doing so, it was found that the actions that had been brought by Omnia were valid UPC actions.
Sidel tried to opt both patent matters out of the jurisdiction of the UPC after the proceedings were commenced, however the requests were found invalid because action had already been brought before the UPC (as per Article 83(3) UPCA).
The Takeaway
Previously, grant might reasonably have been regarded as the natural point at which to make a final decision about whether a European patent should remain under the jurisdiction of the UPC or be opted out. Omnia demonstrates that, at least in the circumstances addressed by the Court, the opportunity to opt out of the jurisdiction of the UPC prior to grant may potentially be lost.
The decision should, however, be treated with appropriate caution. It is a first-instance order from the Paris Central Division and an appeal has been lodged. Its precise scope therefore remains to be determined. In particular, the reasoning was concerned with declarations of non-infringement, and it should not necessarily be assumed that the same approach will apply to every type of UPC proceeding or to every stage of the European patent application process.
Nonetheless, this decision may demonstrate the possibility of pre-grant UPC proceedings. Therefore proprietors may consider whether opt-outs earlier in the life of a European patent application are appropriate.
If you would like to discuss any of the UPC-related issues discussed in this article, including your opt-out strategy for pending European patent applications, please speak to your usual Secerna attorney or contact us.
