UPC Opt Out After Sidel v Omnia

Published 30 September 20267 minute read

A UPC opt out protects nothing if a competitor reaches the court first. The Court of Appeal has now confirmed that this race can begin before the European patent is even granted.

On 21 September 2026 the UPC Court of Appeal dismissed an appeal by Sidel Participations SAS. The respondents were Omnia Technologies S.p.A., ACMI Labelling S.r.l. and ACMI S.p.A. The case number is UPC_CoA_90/2026. Panel 3 decided it, with Judge Ulrike Voß presiding and Judges Bart van den Broek and Nathalie Sabotier sitting. Judge Sabotier was the judge rapporteur.

The order is a clear lesson on UPC opt out timing. A proprietor who wants a patent kept out of the UPC must have the opt out registered before anyone sues. That can be well before grant.

The facts

Sidel held two European patent applications that later matured into EP 4 594 194 and EP 4 624 351. On 3 March 2026 Omnia and the two ACMI companies filed an action for a declaration of noninfringement at the Central Division in Paris. Neither patent had been granted on that date.

The EPO had issued its intention to grant for EP 194 on 11 February 2026. For EP 351, that communication issued only on 26 March 2026, after the action was filed. Sidel filed opt out applications on 2 April and 8 April 2026. Grant of EP 194 was published on 22 April 2026. Grant of EP 351 followed on 20 May 2026. Unitary effect was not requested for either patent.

Sidel raised a preliminary objection. It argued that the UPC lacked competence because Article 32(1)(b) of the UPC Agreement refers to patents, not applications. It also argued that the action was bound to fail under Rule 361 and asked for a stay. On 7 May 2026 the judge rapporteur dismissed the objection, rejected the Rule 361 request and refused a stay in UPC_CFI_799/2026. Sidel appealed.

What the Court of Appeal decided

Competence exists. Article 32(1)(b) gives the UPC exclusive competence over actions for declarations of noninfringement of patents. The Court read Omnia’s statement of claim as directed at the patents EP 194 and EP 351. Its references to the applications were only a description of their status when the action was filed. The fact that the patents were not yet granted did not turn the case into an action about applications.

Timing is an admissibility question. The headnote states that whether such an action can be filed before grant is not a question of competence. It is a question of admissibility. Rule 19 of the Rules of Procedure lists exhaustively the matters that can be raised by preliminary objection. Admissibility of this kind is not among them, so it remains for the further proceedings.

The opt outs came too late. Article 83(3) of the UPC Agreement lets a proprietor or applicant opt out “unless an action has already been brought before the Court”. The Court read “action” as covering every action listed in Article 32, not only infringement and revocation actions. Omnia’s action was lodged before Sidel’s opt out applications. It therefore made those opt outs ineffective. The appeal was dismissed.

Key points

An action aimed at a granted European patent falls in principle within UPC competence, even if filed before grant.
Whether that early filing is admissible is a separate question for the main proceedings.
Any action under Article 32 of the UPC Agreement, including a noninfringement action, blocks a later opt out.
An applicant who wants to stay outside the UPC should opt out while the application is pending.

The order also contains a procedural warning. Under Rule 220.2, leave to appeal against such an order must be granted within 15 days of the order. Here the 15 day period ended on 22 May 2026 and leave was granted only on 26 May. Following its earlier case law, the Court of Appeal treated the silence as a refusal. It left open whether the appeal could proceed as a request for discretionary review, because the appeal failed on the merits in any event.

What the order does not decide

The order does not hold that a noninfringement action filed before grant is admissible. Sidel may still press that argument in the main proceedings. The order also says nothing on whether Omnia’s products infringe.

Nor does it address whether Omnia met Rule 61 of the Rules of Procedure. Under that rule, a declaration is available if the proprietor has asserted infringement. If there is no such assertion, the claimant must first ask the proprietor in writing for an acknowledgment, with full particulars of the act. The proprietor must then have refused or failed to respond within one month.

How India, the US and the UK compare

The UPC is more open to early action than India or the United States. The comparison matters for groups that manage one patent family across all three.

India. Section 105 of the Patents Act, 1970 allows a suit for a declaration of noninfringement. The plaintiff must first ask the patentee in writing for an acknowledgment, with full particulars. The patentee must have refused or neglected to give it. Section 105(4) provides that the suit may be brought at any time after the publication of grant. Validity cannot be questioned in that suit. A competitor concerned about a pending Indian application uses a pre grant representation under section 25(1) instead. Our guide to patent filing in India for foreign applicants explains the opposition stages.

United States. The Federal Circuit held in GAF Building Materials v Elk Corp. (1996) that a threat does not create a case or controversy unless the patent issued before the complaint was filed. Later issuance does not cure the defect. Third parties who want to act earlier can make a preissuance submission to the USPTO under 35 U.S.C. 122(e).

United Kingdom. The UK is not part of the UPC, so no opt out question arises there. Section 71 of the Patents Act 1977 provides for declarations of noninfringement of a patent. Where a patentee keeps applications pending, English courts may instead grant an Arrow declaration. That is a declaration that the product was old or obvious at a given date. The first such declaration was granted in Fujifilm v AbbVie in 2017.

EPO. After publication of the application, any third party can file observations on patentability under Article 115 EPC.

Practical steps for applicants and proprietors

Decide early. Make the UPC decision for each family when the European application is published. Do not wait for the intention to grant or for grant. In this case the action came before the intention to grant for one of the two patents.
File and check. An opt out takes effect only on its entry in the register. Confirm the entry rather than relying on the filing receipt.
Keep the choice open. Under Article 83(4) an opt out can be withdrawn at any time, unless an action has already been brought before a national court. An early opt out therefore preserves more options than a late one.
Weigh the trade off. An opt out avoids central revocation in the UPC. It also gives up a single infringement action covering all participating states. The balance differs for each technology and market.
Watch the transitional period. The opt out regime runs for seven years from 1 June 2023 and can be extended. The opt out must be notified at least one month before the period ends.

For Indian and US groups that file in Europe through the PCT, this decision belongs in the European phase entry plan. Our international patent support for Europe, the US and PCT filings covers that planning. Our article on when to file a PCT application sets out the earlier timing choices.

Practical steps for implementers

Companies launching products in Europe should monitor competitors’ published European applications. A UPC noninfringement action filed early can fix the forum before an opt out is registered. It should be preceded by a proper Rule 61 request where no infringement has been asserted. Its admissibility before grant remains untested, so the costs risk should be assessed. The same step is not available against a pending application in India or the United States.

Claim scope can also change before grant. Our note on EPO G 1/24 and claim interpretation explains how European claims are read with the description.

Frequently asked questions

Can I opt out a European patent application from the UPC?

Yes. Article 83(3) of the UPC Agreement allows an applicant for a European patent to opt out. The opt out takes effect on entry in the register. It is ineffective if an action on that patent has already been brought before the UPC.

Can a competitor sue in the UPC before my European patent is granted?

After Sidel v Omnia, a noninfringement action aimed at the granted patent falls in principle within UPC competence, even if filed before grant. Its admissibility is still open. A properly lodged action blocks any later opt out.

Can I get a declaration of noninfringement in India before a patent is granted?

No. Section 105(4) of the Patents Act, 1970 allows the suit only after publication of grant. Before grant, the usual route is a pre grant representation under section 25(1).

Sidel v Omnia. Your UPC opt out must come before any action.