UPC opt-out strategy: sooner rather than later?

In a decision from the Central Division’s main Paris seat of the Unified Patent Court (UPC), it was found that proceedings could be validly brought before the court in relation to European patent applications that had not yet been granted. This potentially has wide-reaching implications and should cause applicants and representatives alike to rethink their procedural timelines related to UPC opt-outs.

Existing interplay between European patent applications and the UPC

Since the introduction of the Unitary Patent in 2023, 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’ country-by-country validation procedure.

Naturally, the UPC is the international court that has jurisdiction over such Unitary Patents. But the UPC also has exclusive competence to decide on various matters (including infringement, damages and injunctions) related to conventional ‘non-unitary’ European patents. However, for a transitional period of initially seven years – i.e., until 2030, unless otherwise extended – under Article 83(3) UPCA, it has been possible for applicants to opt their conventional European patents out of the UPC’s jurisdiction, so long as no UPC action has already been brought against the patent.

While the UPC does promise some significant advantages, namely the ability to obtain a single right that can be enforced across all participating states, many applicants have been making use of the opt-out provisions. This may be for commercial reasons, such as only requiring patents in select countries (perhaps those that are not part of the UPC, such as the UK). Other applicants may have been happy with the existing system and wanted to see how the new Court developed before falling under its jurisdiction.

Regardless of the reason, the advice surrounding UPC opt-outs was broadly consistent: make sure any relevant applications are opted out no later than grant. Otherwise, there is a risk of an action being brought shortly after grant but before the opt-out is filed, thereby causing your new European patent to be irredeemably ‘trapped’ within the UPC’s jurisdiction.

The decision

This existing thinking has recently been called into question following the UPC’s recent decision in Omnia Technologies S.P.A. v Sidel Participations UPC-CFI-0000799/2026, where Omnia was seeking declarations of non-infringement in relation to two of Sidel’s European patent applications – EP4594194 and EP4624351.

When Omnia filed the actions on 3 March 2026, both applications were pending. A Rule 71(3) EPC ‘intention to grant’ communication had been issued for EP’194 on 11 February 2026, while EP’351 was still with the EPO’s Search Division (though an intention to grant would also be issued for this application on 26 March 2026, before the UPC took any substantive action). At the time that the UPC issued its order on 7 May 2026, the grant of EP’194 had been published in the European Patent Bulletin. However, EP’351 was still pending – a decision to grant had been issued, but the publication of that was not scheduled until 20 May 2026 (the mention of grant in the Bulletin being the date on which the decision to grant takes effect, under Article 97(3) EPC).

Nonetheless, the Paris seat found that the UPC is competent to decide on the declaration of non-infringement for both of the cases. Specifically, it was decided that the UPC is competent to decide on declarations of non-infringement:

i) if the patent is granted and published in the European Patent Bulletin after the action has been filed but before the statement of defence is submitted; or
ii) if the patent has been granted pursuant to Art. 97(1) EPC before the statement of defence is submitted, but the grant has not yet been published in the European Patent Bulletin at that time.

In doing so, it was found that the actions that had been brought by Omnia were valid UPC actions. Sidel had tried to file opt-outs in early April 2026, but these were thus found invalid because an action had already been brought before the Court at that time (as per Article 83(3) UPCA).

Strategy implications

This UPC decision is a first in that it indicates that UPC actions can be filed in respect of pending European patent applications, and that the UPC is willing to issue orders in relation to European patents whose grant is imminent but has not yet come into legal effect.

It is worth noting that the Omnia v Sidel order is just one decision from just one seat of the UPC. Additionally, Sidel has appealed the decision, so it remains to be seen whether the Court of Appeal sides with the Paris seat.

Furthermore, the wording of the order is quite specific. It only relates to declarations of non-infringement, though one could imagine a similar outcome for other actions. Likewise, the order specifies that both patents had been granted “before the statement of defence is submitted”. Perhaps Sidel could have delayed the grant, using existing provisions such as requesting amendments to the text intended for grant, so that this criterion was not met. This might have meant that the Court decided that it was not competent to hear these two actions. Equally though, it may yet be decided that the UPC is competent to hear cases related to European patent applications that are even earlier during their prosecution.

Nonetheless, this decision highlights a risk in waiting until an application is nearly granted before filing an opt-out. Given that opt-outs can be filed from the publication of the European patent application, applicants who are certain they are not interested in Unitary Patents might consider filing opt-outs much earlier during prosecution, as a precautionary step so as not to fall under the UPC’s jurisdiction involuntarily.

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 Barker Brettell attorney or contact us.