ARTICLE SUMMARY
- The Paris Central Division has allowed a UPC action concerning patent applications, where the patents were close to grant.
- The decision confirms the importance of filing opt-outs early, particularly if patentees want to avoid UPC jurisdiction.
- The decision is currently pending appeal, with questions remaining around its wider application.
- Third parties may now consider bringing proceedings before grant, potentially catching patentees by surprise.
In a recent decision (UPC CFI 799/2026, 7 May 2026), the Paris Central Division has authorised the filing of a UPC action in respect of patent applications, emphasising the importance of filing opt-outs early in the prosecution process.
Background
On 3 March 2026, the claimant issued proceedings seeking declarations of non-infringement (DNIs) in respect of two patent applications. One of the patents granted on 22 April 2026 and, in respect of the second case, the mention of the grant was expected to be published in the European Patent Bulletin on 20 May 2026.
Subsequently, the patentee (and defendant) filed opt-outs on 2 April 2026, prior to grant of the relevant patents but after the filing and service of the DNI claim.
The defendant proceeded to challenge the jurisdiction of the Court (via a preliminary objection) on the basis that, according to Art. 32 UPCA, proceedings can only be initiated in respect of a “patent granted under the provisions of the EPC”. Here, the action concerned patent applications.
Decision
The Paris Central Division ruled that:
- it is competent to hear the DNI claims because the patents would be granted by the deadline for filing a statement of defence in the proceedings (at which point, the subject matter would be “clearly defined”);
- the opt-outs were therefore invalid because actions had already been initiated before the UPC, thus locking the UPC’s jurisdiction; and
- the defendant’s suggestion that the scope of the future patent remains unclear was not persuasive because the patents were granted / close to grant, with there being no indication of alteration to claim scope.
It reasoned that its decision:
- was in the interests of procedural efficiency; to rule otherwise would simply result in new proceedings being initiated immediately upon grant of the patents; and
- reduces the risk that a national court, which may permit proceedings concerning patent applications, might hear the claims, the subject matter for which would otherwise be reserved for the UPC due to its exclusive jurisdiction pursuant to Art. 32(1) UPCA.
Comments
This decision is currently pending appeal. To some practitioners, this decision will be surprising, especially for those in jurisdictions where patents can only be litigated upon grant. Clarity on this important issue is welcome, particularly given the current divergence in case law. For instance, the Brussels Local Division previously ruled that the earliest date that a UPC action can be filed is the grant date of a European patent (albeit that decision concerned an application for interim measures, a point of distinction noted by the Paris Central Division)
It is yet to be seen whether the same reasoning would apply to a revocation action, although there is no suggestion in the decision that it is strictly limited to DNIs. The decision does, however, indicate that this ruling would not stretch to patent applications earlier in the prosecution process (being less likely to grant by the time the defence falls due).
In terms of practical considerations, pending further clarity from the Court of Appeal, patentees should consider filing opt-outs at an earlier stage during prosecution (i.e. after publication of the patent application), if seeking to shield European patents from the jurisdiction of the UPC – particularly where they are anticipating a competitor potentially seeking revocation across Europe.
Ultimately, an opt-out can be withdrawn and/or a unitary patent can be obtained, if the patentee wishes to enforce their rights in the UPC upon grant (assuming an action has not already been brought before a national court, which does present some risk of “lock-out” from the UPC).
Equally, third parties may wish to rely on this decision to launch proceedings in advance of grant, potentially catching a patentee by surprise if they have not taken steps to file an opt-out.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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