DNI brought before grant can force UPC opt-in

Background

OMNIA and two ACMI companies filed a DNI action on 3 March 2026 in respect of two of Sidel’s patent applications, EP4594194 and EP4624351. At that point, neither had been granted or opted out – in the case of EP ’194 the 71(3) communication had been issued but not responded to, while for EP ’351 the 71(3) communication had not even been issued. Sidel applied to opt out only after the DNI actions had been filed, on 2 April 2026 for EP ’194 and 8 April 2026  for EP ’351. On 9 April 2026 it filed a preliminary objection challenging the UPC’s competence under Article 32(1)(b) UPCA, arguing that Articles 2 and 32(1)(b) UPCA refer to “patents” and not to patent applications, and that a European Patent only takes effect when the mention of grant is published. In the alternative, Sidel asked the Court to dismiss the action under Rule 361 RoP as manifestly bound to fail, or to stay the proceedings.

The grant of EP ’194 was published on 22 April 2026 and the grant of EP ’351 on 20 May 2026.

First instance

The Paris CD accepted that a patent application is not a “patent” as defined in Article 2 UPCA, and so does not fall within the UPC’s exclusive jurisdiction over “actions for declaration of non-infringement of patents” under Article 32(1)(b) UPCA. However, it did not treat the filing date as the relevant moment. It held instead that it is sufficient for the patent to be granted before the Statement of Defence is filed. By then, the subject matter of the dispute is fixed, which in the Court’s view ensures that its decision concerns a valid and clearly defined subject matter. The Court therefore had jurisdiction over EP ’194.

The Court also had jurisdiction over EP ’351, which at the time had not been formally granted, holding that it was competent where the patent “has been granted pursuant Art. 97(1) EPC, but has not yet been published”. In other words, a decision to grant taken before the statement of defense is filed is sufficient, even though the patent has not yet taken effect under Article 97(3) EPC by the publication of the mention of grant. The Court also rejected Sidel’s concern that the scope of the claims was uncertain: the patents had been granted, or were close to grant, and there was no indication that the claims would change.

The Court gave two policy reasons for allowing an action to be brought shortly before grant:

• Where national law allows proceedings concerning patent applications, it reduces the risk of a national court hearing a dispute that would fall within the UPC’s exclusive jurisdiction under Article 32(1) UPCA once the patent is granted.
• Declining jurisdiction would undermine procedural efficiency and proportionality. The Court would have had to dismiss the action, only for the Claimants to refile immediately after publication of the grant of each patent.

Sidel’s Rule 361 request and the request for a stay were rejected. On the opt-out, the Court held that Article 83(3) UPCA permits an opt-out at the application stage, provided no action has yet been filed at the UPC. Sidel’s opt-outs had been entered on the register only after the DNI actions had been lodged and were therefore ineffective.

The appeal

Sidel appealed against the dismissal of its preliminary objection only. It argued that competence must be assessed when the action is filed, not when the statement of defence is filed, and that the Paris CD’s approach had no basis in the UPCA or the RoP. It also argued that there was no risk of a national court acting without competence as unitary effect had not been requested, and that procedural economy cannot be used to broaden the exhaustive list in Article 32(1) UPCA. In arguing against the appeal, OMNIA relied on the infringement actions in 10x Genomics v NanoString (UPC-CFI-2/2023) and Alexion v Amgen (UPC-CFI-124/2024), which both commenced before publication.

The Court of Appeal dismissed the appeal but applied different reasoning from the Paris CD. It looked first at what OMNIA was seeking: their statement of claim asked the Court to declare that their product did not infringe “the Patents”, defined as EP ’194 and EP ’351. The Court held that “the reference to the patent applications in the Statement was merely a description of their status at the moment of filing the action”. The action was therefore one for a declaration of non-infringement of patents, which is covered in principle by Article 32(1)(b) UPCA.

The relevant question was therefore whether a DNI action concerning a patent can be filed before grant. The Court held that this “is not a question of competence of the UPC but is a question of admissibility of the instituted claims”. Following Aylo v Dish (UPC-CoA-188/2024), Rule 19 RoP exhaustively lists the objections that can be raised by preliminary objection, and admissibility is not among them. Whether the action was brought “too early”, given that Rules 61 and 63 RoP “may require the patent to have been granted”, remains to be decided in the further proceedings. The Court of Appeal therefore did not endorse Parid CD’s test that grant before the Statement of Defence is sufficient. That question remains open.

On the opt-out, the Court of Appeal reached the same result as the Paris CD. Under Article 83(3) UPCA, an opt-out is available “unless an action has already been brought before the Court”. Following AIM Sport v Supponor (UPC-CoA-489/2023), “action” covers all actions mentioned in Article 32 UPCA, including a DNI. Omnia’s action was lodged on 3 March 2026, before Sidel’s opt-out applications, and therefore “renders the opt outs ineffective”.

Sidel argued that it had been impermissibly deprived of its right to opt out. The Court rejected this because it rested on the incorrect assumption that the action concerned patent applications, adding that it was “leaving aside the question whether Art. 83(3) UPCA even leaves room for Sidel’s argument”.

Outcome 

The appeal was dismissed and the action continues before the Paris CD, where the admissibility of the pre-grant DNI action will be decided. Read together, the two orders confirm that a DNI action filed before grant falls within the UPC’s competence and prevents a later opt-out. The Court of Appeal’s reasoning on the opt-out does not appear to depend on the action ultimately being found admissible, and it is unclear whether a patentee could opt out if a premature action were later dismissed on that basis. Because admissibility cannot be raised by preliminary objection, a patentee in Sidel’s position cannot obtain an early ruling on the point and must defend the action on the merits in the meantime.

Competitors now have a means of securing UPC jurisdiction before the applicant can react, albeit at the risk that the action is later held to have been brought too early. Applicants who wish to keep their patents outside the UPC should therefore opt out early, while the patent is still at the application stage, and ideally well before the 71(3) communication is issued.