Background
On 3 March 2026, Omnia et al. (the claimants) filed a declaration of non-infringement ("DNI") action against two pending European patent applications: EP 4 594 194 ("EP194") and EP 4 624 351 ("EP351").
At the time the action was brought, intention to grant under Rule 71(3) EPC had been issued for EP194, but the patentee had not yet taken the necessary steps for the application to proceed to grant. As for EP351, intention to grant had not yet been issued.
Sidel (the defendant) subsequently filed opt-out applications for EP194 and EP351 on 2 and 8 April 2026. On 9 April, Sidel objected to the UPC’s competence to hear the DNI action under Article 32 UPCA. Sidel argued that Article 32 concerns granted patents ("patent granted under the provisions of the EPC") and not pending applications, and that permitting an action at the application stage would, among other things, create uncertainty as to the patent’s ultimate territorial scope.
By the time the Court considered the objection, EP194 had been granted. As for EP351, the EPO had issued a decision to grant pursuant to Article 97(1) EPC with publication of the mention of grant expected on 20 May 2026.
Order by the Paris Central Division
The Court noted that the UPC has exclusive jurisdiction over the actions listed in Article 32(1) UPCA, including DNIs under Article 32(1)(b), whereas jurisdiction in other cases remains with national courts.
The Court also confirmed that a European patent application is not in itself a "patent" under the UPCA. Nevertheless, the Court held that a DNI action may be lodged before formal grant, provided that the patent is granted before the statement of defence is filed (typically within three months of service of the statement of claim pursuant to RoP Rule 23).
The Court considered that this approach avoids national court proceedings concerning a patent application where the subject-matter, once granted, is reserved for the UPC under Article 32(1) UPCA. It also avoids scenarios in which the UPC would decline jurisdiction, only for the claimant to commence substantially identical UPC proceedings shortly after grant.
The Court noted that this approach is consistent with earlier cases filed before the relevant patent had been granted, including NanoString v 10x Genomics (UPC_CFI_2/2023) and Alexion v Amgen (UPC_CFI_124/2024). It further clarified that Barco v Yealink (UPC_CFI_582/2024) concerned the timeliness of PI applications and not whether legal proceedings may be filed before grant.
As for opt-outs, the Court held that allowing a pre-grant DNI does not unreasonably impair the proprietor’s opt-out right. Article 83(3) UPCA permits an opt-out while an application is pending, provided that no action before the UPC has already been brought. Since Sidel’s opt-outs were filed after Omnia had lodged the DNI action, they were ineffective under Article 83(3) UPCA and Rule 5(6) RoP.
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