UPC Action Permissibly Lodged Prior To The Grant Of A European Patent

The Unified Patent Court (UPC) has competence over granted European patents unless they have been opted-out of the UPC’s jurisdiction. However, a recent order from the Paris Central Division indicates one may file a UPC action before the grant of the underlying European patent.

The order sets out two scenarios in which the UPC has jurisdiction before the grant of a European patent:

1. actions seeking a declaration of non-infringement of a patent pursuant to Art. 32(b) UPC Agreement (UPCA) if the patent is granted and published in the European Patent Bulletin after the action has been filed but before the statement of defense is submitted; and
2. actions seeking a declaration of non-infringement if the patent has been granted pursuant to Art. 97(1) EPC before the statement of defense is submitted, but the grant has not yet been published in the European Patent Bulletin at that time.

The first three years of the UPC have seen the development of substantial case law, establishing clear approaches for the assessment of key issues.

For example, as discussed here, the UPC introduced the “holistic approach” for the assessment of inventive step in 2025. Now, as we near the mid-point of the current seven-year “sunrise period”, many proprietors continue to “opt-out” European Patents from the UPC’s exclusive jurisdiction, leaving those patents to the jurisdiction of national courts.

For proprietor’s considering to opt-out of the UPC, a recent order of the Central Division Paris demonstrated the importance of acting early. In Omnia Technologies et al. v Sidel Participations,¹ the claimants (Omnia Technologies et al.) sought declarations of non-infringement in relation to two patents owned by the defendant (Sidel Participations) before the patents-in-suit were granted. Indeed, when the claimants sought these declarations, the defendant had not yet even filed opt-out requests for those patents.

The defendant thus raised a preliminary objection, asserting the UPC lacked jurisdiction over the patents-in-suit. The Central Division disagreed, however. As discussed more below, a factor was that one ground concerned a patent that had not yet published, whilst the other ground concerned an ungranted patent not yet even published.

According to the decision, the defendant argued that Article 32 UPCA only provides jurisdiction over granted “patents” and not patent applications. However, the Central Division determined it has jurisdiction when a patent’s grant date occurs before filing of the Statement of Defense. The court reasoned that this avoids the risk of a national court handling proceedings for an application that – once granted – would be under the exclusive jurisdiction of the UPC. The court also reasoned that this increases efficiency because, under the defendant’s proposed approach, the court would have to declare it lacks jurisdiction prior to grant, only to then declare later that it has jurisdiction if the grants with unitary effect or without being opted out.

The defendant argued that the decision conflicted with the Brussels Local Division’s order in Barco v Yealink, ² where the court emphasized that the earliest date to file a UPC action is the grant date of a European patent. However, the court considered its decision to concern the timeliness of an application for interim measures – not the admissibility of a lawsuit before the patent’s grant.

The defendant also argued that allowing the filing of UPC actions prior to grant would deprive the opportunity to opt-out. But the court disagreed, explaining that the applicant can file an opt-out at any point during prosecution, so the court’s procedure does not unreasonably impair the option to opt-out.

The defendant did file opt-outs prior to grant, but only after the claimant lodged the action for the declarations of non-infringement. Therefore, despite filing the opt-outs prior to grant, the opt-outs were not valid because Article 83(3) UPCA allows for filing an opt-out only after “an action has already been brought before the [UPC].”

For these reasons, the court in Omnia Technologies et al. v Sidel Participations disagreed with the defendant’s preliminary objection and proceeded with the action.

Therefore, practitioners wishing to remove a European patent from the jurisdiction of the UPC should file an opt out as soon as possible, rather than waiting until the date of grant. If a practitioner opts-out a patent during prosecution, but subsequently decides that they would like to obtain a unitary patent and/or bring an infringement action at the UPC, the practitioner can always withdraw the opt-out request, assuming an action has not already been brought before a national court.

On the contrary, when considering whether to start a UPC action against a yet-granted European patent, then consider monitoring the corresponding application and bringing a potential UPC action later but before grant of that patent application.

Footnotes

1. Omnia Technologies et al. v Sidel Participations SAS, UPC Central Division (Paris Seat), Order of 7 May 2026 (UPC_CFI_799/2026)

2. Barco NV v Yealink (Xiamen) Network Technology Co. Ltd. And Yealink (Europe) Network Technology BV, Brussels Local Division, Order dated 21 March 2025 (UPC_CFI_582/2024)