UPC extends its reach into pre-grant proceedings at the EPO

You have until grant to decide whether to opt-out of the UPC, right?  Don’t be so sure…

The UPC Court of Appeal recently issued its decision in Sidel v Omnia, providing clarification on the competence of the UPC in actions brought against pending European patent applications. This decision has significant implications for pre-grant strategy, especially concerning European cases where it is desirable to opt-out of the UPC.

Background to the decision

Omnia brought an action at the UPC requesting a declaration that its labelling module product did not infringe two of Sidel’s European patents. Critically, those two patents were not actually granted; they were actually pending applications, only one of which had even received a Rule 71.3 Communication (i.e. an allowance).

Sidel subsequently applied to opt-out of the exclusive competence of the UPC with respect to the two patent applications and filed a preliminary objection against Omnia’s action. Sidel’s preliminary objection was dismissed. Sidel appealed the decision arguing that because the patents in question had not yet been granted when Omnia filed its request, the UPC was not competent to hear Omnia’s action. The Court of Appeal issued its decision on 21st September 2026.

Pre-grant actions may secure UPC jurisdiction for European patent applications

The Court of Appeal held that the UPC was competent to hear Omnia’s action. The Court stated that whilst Article 32(1)(b) of the UPCA does refer to patents (and not patent applications), Omnia’s request related to a declaration of non-infringement in respect of those patents as envisaged following grant. The fact that the patents had not yet been granted at the time that the action was brought did not deprive the UPC of jurisdiction. 

The Court of Appeal went on to consider whether Omnia deprived Sidel of its right to opt-out of the exclusive competence of the UPC. Under Article 83(3) of the UPCA, unless an action has already been brought before the Court, the applicant for or proprietor of a European patent can opt-out of the exclusive competence of the UPC. As Omnia brought its action before Sidel opted out of the UPC in respect of the patents in question, the subsequent opt-out was ineffective and could not remove the exclusive competence of the UPC.

UPC strategy may need to be considered before grant

This decision illustrates that UPC actions can be brought before grant and may commit the resulting European patent to the jurisdiction of the UPC. Thus, the decision of whether to opt-out of the UPC may need to be considered earlier in the pre-grant stage than you may expect. 

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