Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 10 AUGUST 2026

UPC Opt-outs: Act Early Or Risk Being Locked In

J A Kemp
J A Kemp
Contributor
J A Kemp

J A Kemp

J A Kemp is one of the largest European patent and trade mark attorney firms, with offices in...

View firm profile
Explore more from J A Kemp

A recent UPC order has established that actions can be brought before the Unified Patent Court concerning pending European patent applications approaching grant, potentially rendering later opt-out requests ineffective. This development raises critical questions about the timing of opt-out strategies and the mechanisms available to patent applicants seeking to avoid UPC jurisdiction.

United StatesIntellectual Property
Christopher King
Christopher King
Jimmy Nicholls
Jimmy Nicholls
Hiro Shimazaki
Hiro Shimazaki
Martin Jackson
Martin Jackson
Author LinkedIn connections

In a recent UPC order (Omnia v Sidel, UPC_CFI_799/2026, 7 May 2026), it was held that a UPC action may be brought in respect of a pending European patent application as it approaches grant. Such an action can render a later-filed UPC opt-out ineffective, locking the resulting patent into the jurisdiction of the UPC.

Grant Procedure at the EPO

As a European patent application approaches grant, the procedure involves (i) the issuance of a communication under Rule 71(3) EPC notifying the applicant of intention to grant the application; (ii) the applicant performing various acts to progress the application to grant, including approving the text that is proposed for grant; (iii) the issuance of a communication notifying the applicant of a decision to grant the application under Article 97(1) EPC; and (iv) publication of the mention of grant in the European Patent Bulletin. The publication of the mention of grant typically occurs around a month after the decision to grant

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

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.

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

Patents And University Spin-outs: Protecting Academic Innovation

Universities drive innovation across medicine, AI, materials, and clean tech, but academic researchers face a critical challenge: the need to publish conflicts with patent protection requirements for confidentiality. Understanding how to navigate publication deadlines, filing strategies, and IP development can determine whether groundbreaking research becomes a valuable commercial asset or loses protection entirely.
United StatesIntellectual Property
J A Kemp
J A Kemp
Article

UK High Court Upholds Novartis’s Sacubitril Valsartan SPC: What Is The Relevant “product”?

The UK High Court has rejected a challenge to Novartis's supplementary protection certificate for sacubitril and valsartan, addressing a fundamental question about how the "product" protected by an SPC should be defined. The decision clarifies whether a specific co-crystal formulation or the broader combination of active ingredients constitutes the relevant product under the SPC Regulation.
United StatesIntellectual Property
J A Kemp
J A Kemp
Article

UK High Court Upholds Takeda’s Lisdexamfetamine SPC: Will The CJEU Agree?

The UK High Court has ruled on whether lisdexamfetamine (LDX), a pro-drug with no therapeutic activity before conversion to dextroamphetamine, can be considered an "active ingredient" for supplementary protection certificate purposes. This decision addresses a critical question in pharmaceutical patent law that has produced divergent outcomes across European jurisdictions and is currently before the CJEU in multiple pending referrals.
United StatesIntellectual Property
J A Kemp
J A Kemp
Article

Court Of Appeal Update On Timing Of UPC Opt-outs

The Court of Appeal of the Unified Patent Court has confirmed that actions can be brought concerning pending European patent applications approaching grant, and that such actions render subsequently filed opt-outs ineffective. However, a critical question remains unresolved: while the UPC is competent to hear these pre-grant actions, their admissibility based on timing has yet to be determined, leaving patent applicants in uncertain territory regarding opt-out strategy.
United StatesIntellectual Property
J A Kemp
J A Kemp
Video

Navigating Freedom To Operate (FTO): Strategy, Searches And Risk Mitigation (Video)

This webinar explores the critical Freedom to Operate (FTO) process for life sciences companies, examining when FTO assessments are necessary and how to navigate the complex landscape of patent risks. From initial search strategies and cost considerations to evaluating potential infringement risks and implementing ongoing monitoring systems, the session provides practical guidance for managing intellectual property challenges in product development and commercialization.
United StatesIntellectual Property
J A Kemp
J A Kemp