UPC CoA confirms jurisdiction over pending European patent application

Now patent holders may be locked into the UPC system even prior to grant.  

The UPC has jurisdiction over European patents that have not been opted out. But what about European patent applications? The UPC Court of Appeal (CoA) [UPC_CoA-90/2026] decided on this point last week, confirming the Paris Central Division’s (CD) [UPC_CFI_799/2026] findings that the UPC’s jurisdiction can extend to European patent applications provided the applications are granted under Article 97(1) EPC1 before the statement of defence is filed.  This has significant implications on the timing of UPC opt-outs. 

Background and CD’s Reasoning 

On 3 March 2026, Omnia, a packaging and labelling company, sought a declaration of non-infringement (DNI) of two of Sidel’s, patents, EP 4594194 (EP ‘194) and EP 4624351 (EP ‘351). At the time the action was launched, both of Sidel’s patents were pending. The EPO had issued a Rule 71(3) EPC communication for EP’194 confirming its intention to grant the patent, but Sidel had not completed the grant formalities and, hence, the decision to grant under Article 97(1) EPC had not issued. EP ‘351 was at an earlier stage of prosecution and no intention for grant under Rule 71(3) EPC had even issued.  

Sidel opted out EP ’194 and EP ’351 on 2 and 8 April 2026, shortly after Omina’s service of claim became effective. EP’194 and EP’ 351 granted under Article 97(1) EPC 26 March 2026 and 23 April 2026, respectively.  

Sidel challenged the UPC’s jurisdiction to hear the case on 9 April 2026. While it was accepted that Article 32(1)(b) UPC provided the UPC with exclusive competence for actions for DOIs of patents, Sidel argued that this could not apply to the present instance since the action was brought before the patents had granted.  Sidel argued, among other things, that, at the stage when Omnia’s actions were brought, the territorial scope of the action was uncertain. It was also unknown in which contracting states of the EPC the two disputed patent applications would be validated or whether they would even become a European patent with unitary effect.   

The CD disagreed. While the CD agreed that the UPC would only have jurisdiction over actions such as DOIs after grant, this would be the case if the patents were granted by the time the defendant’s (in this case Sidel’s) Statement of Defense was filed.  Thus, the UPC had jurisdiction provided that the patent was granted under Article 97(1) EPC prior to the filing of the Statement of Defence.  In these circumstances, the uncertainties arising from territorial scope would not apply.  Moreover, the CD held that hearing the case would be in line with procedural economy. For example, where national law provided for proceedings relating to patent applications, it reduced the risk that a national court might be involved in proceedings whose subject matter, once the patent had granted, was in the reserve of the UPC. 

The UPC CoA decision 

The UPC CoA has endorsed the CD’s approach. Although this case relates to DNIs there does not seem to be an obvious reason why the same rationale may not also apply to e.g., revocation actions. Thus, depending on timings, a pre-emptive DNI action and perhaps even a revocation action may pin a patent holder into the UPC.  

To avoid this risk, it is advisable to make opt out decisions sooner.  This may be particularly of interest with respect to patent applications that a proprietor suspects would be of interest to third parties (e.g., if third party observations have been filed during prosecution or if oppositions have been filed on related cases or cases in the same family).  A pre-emptive attack by a third party will lock the patent holder into the UPC, which may not always be in the patent holder’s best interest.  

It is possible to opt European patent applications out of the UPC from the date of publication of the application, i.e. even before an application is examined.

If you would like to revisit your opt out strategy, please contact Hsu Min Chung or your usual HGF advisor.