SILIMED Indústria de Implantes Ltda v Polytech Health & Aesthetics (CFI, 7 May 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In an order of 7 May 2026 (UPC_CFI_481/2026), the judge-rapporteur of the Hamburg Local Division upholds the defendants’ preliminary objections and dismisses as inadmissible SILIMED’s infringement action against Polytech Health & Aesthetics and seven other defendants, since the UPC lacks competence over EP 2 581 193 B1 owing to the opt-out filed on 30 March 2023. Two points of principle emerge: an opt-out lodged by the registered proprietor before an entitlement judgment took the patent away from it remains valid, and a withdrawal of the opt-out is ineffective once a national revocation action has been brought, even by a third party.

Facts and procedure

Defendant 1, then the registered proprietor, filed the opt-out on 30 March 2023 (paragraphs 3 and 31). The Higher Regional Court of Frankfurt later held SILIMED Indústria de Implantes to be the rightful owner. The judgment became final on 5 January 2026 after the Federal Court of Justice refused leave (paragraphs 4 and 32). On 9 January 2026, PTH&A Management GmbH, described as a parent holding company, brought a revocation action against the German part of the patent before the Federal Patent Court (paragraphs 7, 8 and 43). SILIMED withdrew the opt-out on 4 February 2026 and sued at the UPC on 5 February 2026 (paragraphs 10 and 11). The Registrar rejected its application to remove the opt-out on 10 April 2026 (paragraph 14).

Defendants 1 and 8, and Defendants 2 to 7, lodged preliminary objections (Rule 19 RoP). The claimants argued that the opt-out came from an unauthorised proprietor, that the national action, filed in breach of a Munich protective order, was irrelevant, and that the issue belonged to the merits (paragraphs 23 to 25).

The applicable law

Art. 83(3) UPCA allows the proprietor of a European patent to opt out of the UPC’s exclusive competence during the transitional period. Art. 83(4) allows the opt-out to be withdrawn unless an action has already been brought before a national court. Rules 5 and 5A RoP govern the opt-out and its withdrawal, and Rules 8.4 and 8.5 RoP create a presumption based on the register.

Question

Is an opt-out filed by a registered proprietor later stripped of the patent by an entitlement judgment valid, and does the rightful owner’s withdrawal take effect where a national revocation action has been brought in the meantime?

Decision

The objections are admissible and filed in time (paragraph 28). German entitlement judgments operate ex nunc, with no retroactive effect (paragraphs 34 and 35): until the transfer, the unauthorised proprietor can validly opt out (paragraph 36). The ‘proprietor’ in Art. 83 UPCA is the substantive proprietor, but Rules 8.4 and 8.5 RoP set a rebuttable presumption, authorisation being assessed at the time of the act. Legal certainty requires the register to show clearly which patents fall within the UPC’s jurisdiction (paragraphs 37 to 39).

The withdrawal is ineffective: under German law a revocation action is brought when the court receives the statement of claim, here on 9 January 2026, before the withdrawal of 4 February 2026, a result confirmed by analogy with Art. 32 of Regulation 1215/2012 (paragraphs 41, 45 and 46). A revocation action falls within Art. 32(1)(d) UPCA (paragraph 47). The Registrar’s decision does not bind the Court (paragraph 49), and the Munich protective order, addressed to Defendant 1 alone, does not cover a third party’s action, whose lawfulness is irrelevant (paragraphs 50 and 51). The action against Defendants 1 to 8 is dismissed as inadmissible, without ruling on the auxiliary requests (paragraphs 52 and 53).

Key points for practice

• An owner recognised by an entitlement judgment is bound by the opt-out filed by the registered predecessor.
• A national revocation action brought by a third party, including a company in the opposing group, locks the opt-out under Art. 83(4) UPCA.
• The relevant date is receipt of the statement of claim by the national court, not service.
• Practical point: an owner who succeeds in entitlement proceedings should withdraw the opt-out at once, before any national action is filed.

Provisions applied

Agreement on a Unified Patent Court

Art. 32(1)(a) and (d), 73(1) and 83(3) and (4)

Rules of Procedure

Rules 5, 5A, 8.4, 8.5, 19, 20.2, 220.1(a) and 224.1(a)

European Patent Convention

Art. 60

Regulation (EU) No 1215/2012

Art. 32

Case law cited

Fingon v Samsung, Mannheim Local Division, 4 April 2025, Dyson v Dreame, Court of Appeal, 6 March 2026

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.