UPC Weekly - How early is too early for UPC actions and UPC opt-outs?

UPC Weekly brings you timely, thoughtful and joined-up insight into the evolving landscape of patent litigation at the Unified Patent Court.

2026 Week 39

More from the UPC Court of Appeal this week on opt-outs and specifically about their timing. The case is Sidel v. Omnia (UPC CoA, 21 September 2026). To my mind at least, this recalibrates various issues of UPC and EPO practice.

The preliminary objection (PO) procedure set out in Rule 19 RoP is intended as a quick and early way for a defendant to contest whether the claimant’s case should be heard at the UPC at all. There are only three bases for a successful PO. Two are only rarely used – that the case is in front of the wrong division of the UPC (R. 19.1(b)), or that the case has been filed in the wrong language (R. 19.1(c)). The vast majority of POs are instead based on R. 19.1(a) – that the UPC lacks jurisdiction or competence.

A successful PO based on lack of “competence” would mean that the subject matter of the action is something that the UPC is not empowered to decide on, such as an entitlement action.

The UPC Agreement carefully expresses the term “international jurisdiction” as being governed by EU law in the same way as for national EU courts. Many POs have been brought based on arguments about the jurisdiction of the UPC over some or all of the defendants in the case in view of the Brussels Regulation / Lugano Convention. For more tricky points about the UPC’s approach to long arm jurisdiction in particular, see UPC Weekly 2026 w12 and UPC Weekly 2026 w23. Because that’s not what we’re talking about here.

Instead, we’re talking about opt-outs. R. 19.1(a) says that a PO can be based on the fact that the patent has been opted out. According to the wording of the UPC Agreement, an opt-out relates to the competence of the UPC, rather than to its jurisdiction.

First instance – admissibility and timing

In UPC Weekly 2026 w32 we reviewed Omnia v. Sidel (UPC CD Paris, 7 May 2026). Omnia had launched proceedings for declarations of non-infringement (DNI) against two Sidel patents: EP 4594194 B1 and EP 4624351 B1. It’s worth seeing a timeline of events for each case. In the table below, steps related to the EPO are in oxblood and UPC steps are in pink.

For the parent application EP 4594194 B1, substantive prosecution at the EPO included amendments to the claims in response to objections raised in the international phase and a response to third party observations.

For the divisional application EP 4624351 B1, no substantive objections were raised by the EPO examiner and no third party observations were filed. Formally speaking, substantive examination of the divisional application started on 13 March 2026, with the application allowed two weeks later.

The Paris Central Division decided that filing the DNI actions before grant of the patent was permissible in these cases, and therefore that the opt-outs were filed too late. The POs were rejected.

Appeal – admissibility or competence?

The appeal was complicated by issues around whether it had been filed in time and, if not, whether it should be treated as a request for discretionary review. The CoA parked those issues in order to give their view on the preliminary objection.

The key issue here was whether the UPC is competent to hear the action. No-one disputed that the UPC is competent to hear action for DNIs for granted patents. Although the DNIs were filed before grant of the patents, the CoA considered it was clear that what was being requested was a declaration concerning the patents once they were granted, rather than anything in relation to the patent applications. But the CoA explained that Sidel’s objection was not about the competence of the UPC, but instead whether a DNI action filed before grant is admissible. This is a question to be decided on the merits, rather than an available basis for a preliminary objection.

If a patent is opted out, this does affect the competence of the UPC under R. 19.1(a). The CoA therefore turned to the question of whether the opt-outs were effective. According to Article 83(3) UPCA, an opt-out is effective “unless an action has already been brought before the Court”.

The CoA decided that the “lodging” of the DNI actions before the filing of the opt-outs means that the opt-outs are not effective. Therefore the UPC has competence.

How far can this go?

There is asymmetry here. On the one hand, the CoA does not rule on the admissibility of the DNIs. It may still be possible for the DNIs to be deemed inadmissible because they were filed too early, or that the correct procedure for a DNI was not followed. In particular for the divisional application, the DNI was filed before the EPO had indicated that examination of the application had formally started. It would have been possible and reasonably normal for the applicant to seek amendment of the claims in the examination procedure.

On the other hand, the CoA ruled that the mere lodging of the DNIs, presumably even if they are ultimately held to be inadmissible, means that the later-filed opt-outs were ineffective.

Based on this logic, there doesn’t seem to be a reason why lodging a different type of action at the UPC before grant of the patent shouldn’t have the same result. For example, a central revocation action filed before grant may be deemed to be validly “lodged” and therefore prevent a subsequent opt-out of the patent or patent application. Note, though, that where an action attracts a court fee, then according to R. 15.2 RoP, it is not deemed to be lodged until the court fee has been paid.

How early should you opt out?

The first instance decision attempted to place some limits on the admissibility of the DNI, in particular that it should not be filed so early that the deadline for the patentee to file their defence would fall before the decision to grant the patent has issued by the EPO. The CoA did not comment on this, deferring all issues of admissibility of the DNIs to the merits decision.

For anyone really wanting to ensure that their patent application is opted out of the UPC, it is now clearer than before that this should be done before there is any possibility of lodging of an action against it at the UPC. While it may not be reasonable for the UPC to entertain a DNI or revocation action lodged against a patent application long before the form of the claims to be granted is settled, a safety-first attitude would be to opt out critical patent applications early.

For practical reasons, the UPC needs to know the European publication number of the patent application in order to process an opt-out request. Looking at the table above, you can see that for an international application entering the European regional phase, although there was international publication, it is only assigned a European publication number later. Once the European publication number is known, the opt-out can be prepared and filed.