SIDEL PARTICIPATIONS v OMNIA (CoA, 2026-09-21)

Holding

The Court of Appeal dismissed Sidel's appeal against the order of the judge-rapporteur of the Paris Central Division rejecting its preliminary objection. It held that the question whether an action for a declaration of non-infringement can be filed before grant of the patent goes to the admissibility of the claims, not to the competence of the Court, so that a preliminary objection based on lack of competence fails. The admissibility question remains open for the further proceedings before the Central Division.

Why it matters

Omnia had filed its declaration of non-infringement action on 3 March 2026, before grant of EP 4 594 194 and EP 4 624 351 and before Sidel lodged opt-out applications on 2 and 8 April 2026. The Court of Appeal treated the patent status stated in the Statement of claim as a description at the moment of filing and considered the action to fall within Article 32(1)(b) UPCA. It also rejected Sidel's argument that the early filing unlawfully deprived it of its opt-out right, since the action predated the opt-out applications, with the consequence stated in the order that the opt-outs are ineffective. The practical consequence is that a prospective defendant may seize the UPC with a DNI action while the patent is still an application, and thereby block a later opt-out, subject to the admissibility questions the Court expressly left open, including the timing rules of Rules 61 and 63 RoP.

Practical point

Patentees who intend to opt out sensitive applications should file the opt-out before grant and before any third party can commence a UPC action; waiting until a dispute crystallises may be too late.

Official headnote

The question whether an action for a declaration of non-infringement of a patent can be filed before its grant is not a question of competence of the Unified Patent Court but is a question of admissibility of the instituted claims.

Official decision (PDF) · UPC registry entry

Dhenne Avocats represents claimants and defendants in European patent disputes before the Unified Patent Court, including the Paris divisions.