By order of 21 September 2026, the Court of Appeal of the Unified Patent Court (UPC) addressed a question that UPC case law had not yet settled: whether an action seeking a declaration of non-infringement of a European patent may be brought when, at the time the Statement of Claim is filed, the patent has not yet been formally granted.

The Case

The dispute arose from an action for a declaration of non‑infringement filed on 3 March 2026 by Omnia Technologies S.p.A. before the Paris seat of the UPC’s Central Division, concerning two European patents owned by Sidel Participations S.a.s. that had not yet been granted on the date the Statement of Claim was filed. This circumstance led the defendant raising a Preliminary Objection under R. 19 RoP challenging the UPC’s jurisdiction to hear a pre-grant action.

Sidel challenged the UPC’s jurisdiction, arguing that Article 32(1)(b) UPCA, which expressly refers to “patents” rather than to “patent applications”, precludes an action for a declaration of non‑infringement concerning patents not yet granted.

By order of 7 May 2026, the Paris Central Division of the UPC dismissed the objection, finding it sufficient for the UPC to be deemed competent that the patent had been granted by the time the Statement of Defence was filed, since this circumstance would in any event ensure that the final decision concerned a valid and clearly defined patent and prevent situations contrary to the principle of procedural efficiency. That was indeed the case, since the EPO had issued decisions to grant for both patents ahead of the deadline for Statement of Defence.

The Court of Appeal’s decision

Further to Sidel’s appeal, the Court of Appeal adopted a different approach from that of the Central Division.

The Court of Appeal noted in particular that the nature of an action is to be determined on the basis of the requests as set forth in the introductive Statement of Claim. By applying that standard, the Court of Appeal noted that the requests to the UPC in the Statement of Claim were clearly and unambiguously phrased as a request to declare the non-infringement not of the patent applications at stake, but of the “patents” ensuing from those applications. It followed that the action, properly understood in light of the claimant’s actual intent, was directed to a declaration of non-infringement of patents rather than of mere patent applications, and therefore fell within the UPC’s jurisdiction pursuant to Art. 32(1)(b) UPCA.

The Court of Appeal further noted that the question in dispute was not whether the UPC would have jurisdiction to hear the action, but rather whether an action for a declaration of non-infringement targeting a patent when the latter has yet to be formally granted would be admissible under UPC rules. The Court of Appeal has declined to reach a conclusion since procedural admissibility is not a challenge that can be raised by means of a Preliminary Objection pursuant to R. 19 RoP.

Implications for the effectiveness of the Opt-Out

While noting that the abovementioned question of admissibility would have to be decided with the final judgment on the merits, the Court of Appeal has nevertheless already reached a significant conclusion on the impact that the action for a declaration of non‑infringement had on the opt-out mechanism set forth in Art. 83 UPCA and R. 5(6) RoP.

In response to Sidel’s argument that Omnia’s action for a declaration of non-infringement had “impermissibly deprived [Sidel] of its right to opt out the patents”, the Court of Appeal first noted that (a) Sidel could have applied for an opt-out at any time before grant, as Art. 83 (3) UPCA allows the lodging of an opt-out application in respect of patents as well as patent applications and (b) that Omnia’s action prevented Sidel from opting the relevant patents out of the UPC’s jurisdiction, in as much as such action was filed before Sidel lodged its opt-out applications. The Court of Appeal has therefore implied that, whether eventually admissible or not, Omnia’s action was per se sufficient to prevent Sidel’s opt-out.

Having noted that an opt-out can be lodged way ahead of formal grant, the Court of Appeal has therefore sent a stark reminder to patentees. Against the background of R. 61 RoP, which allows an action for a declaration of non‑infringement to be brought in response to an assertion of infringement, patent applicants wishing to avoid pre-grant UPC proceedings must check the opt-out status of their patent application before sending any cease-and-desist letter or other assertion of infringement.

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