PATENTS: When Should You File an Opt-Out?

An opt-out request, which allows a European patent to be excluded from the jurisdiction of the Unified Patent Court (UPC), may, in principle, be filed as soon as the European patent application is published. However, pursuant to Article 83(3) of the Agreement on the UPC, no opt-out may be validly registered once proceedings have already been initiated before the UPC.

In practice, however, some patent owners prefer to wait until the notification under Rule 71(3) EPC is issued before filing their opt-out request.

This strategy could, however, be called into question in light of the decision handed down by the JUB Court of Appeals on September 21, 2026 (UPC-CoA-90/2026).

The Facts

In this case, a company filed a motion with the Central Division of Paris seeking a declaration of non-infringement with respect to two European patents, in order to have it declared that its activities did not fall within the scope of protection of those patents.

At the time the action was filed, neither of the two patents had yet been granted. The notifications under Rule 71(3) EPC were in fact issued only at a later date.

The patent owner then filed opt-out requests for the two patents in question and, prior to their issuance, raised a preliminary objection seeking to have the action declared inadmissible on the grounds that the JUB lacked jurisdiction to hear a case based solely on patent applications.

This objection was rejected. The reporting judge held, in particular, that it was sufficient for the patents to have been issued before the statement of defense was filed, which was the case here.

The defendant filed an appeal.

The Court of Appeals' Decision

The Court of Appeals held that the fact that the patents had not yet been granted at the time the action was filed did not transform the action into an action for a declaration of non-infringement with respect to patent applications.

According to the Court, the central issue was therefore not whether the JUB has jurisdiction to hear cases involving patent applications, as the patent owner argued, but rather whether an action seeking a declaration of non-infringement of a patent can be validly filed before the patent is granted.

The Court also noted that this was a matter of admissibility, not jurisdiction. However, Rule 19 of the Rules of Procedure provides an exhaustive list of the objections that may be raised in a preliminary objection, without including issues of admissibility.

The court therefore concluded that the question of whether the action seeking a declaration of non-infringement was admissible—either because it did not concern the specific embodiment referred to in the formal notice or because it had been filed prematurely before the patent was granted— remained open and would have to be decided on the merits during the proceedings.

Furthermore, consistent with its previous case law, the Court held that the filing of an action seeking a declaration of non-infringement rendered any opt-outs filed subsequently ineffective. Consequently, the objection to jurisdiction raised by the rights holder was dismissed.

In conclusion

• The Court of Appeals did not rule on the issue of the admissibility of an action seeking a declaration of non-infringement filed before the relevant patent was granted.
• However, it held that this issue cannot be considered as part of a preliminary objection.
• This gives rise to a significant practical risk: a declaratory action for non-infringement filed before a patent is granted may be considered an “action brought before the JUB” within the meaning of Article 83(3) of the JUB Agreement, thereby rendering any opt-out filed subsequently ineffective, even if the admissibility of that action has not yet been decided on the merits.

Main practical implication

This decision supports filing the opt-out early, without waiting for the notification to be issued pursuant to Rule 71(3) EPC. Otherwise, a third party could file a lawsuit with the Unified Patent Court before the patent is granted, thereby depriving the patent owner of the opportunity to subsequently remove the patent from the jurisdiction of the Unified Patent Court.