UPC Court of Appeal rules on its jurisdiction over pre-granted patents

Many a patent is already a thorn in the side of competitors before the patent holder even has it in their hands. A ruling this week can be interpreted to mean that those very competitors can challenge such a patent before the UPC whilst it is still under examination at the EPO, even if the patent holder subsequently opts out of the patent.

The UPC Court of Appeal this week dismissed an appeal by Sidel as not well-founded (case ID: UPC-CoA-90/2026). The dispute between the two machine manufacturers centres on two patents owned by Sidel, EP 4 594 194 and EP 4 624 351. They protect certain steps within labelling machines (labelling module).

Actions before grant

In March, Omnia brought an action before the Paris central division, requesting the court declare that the “Opera Omnia labelling module” does not directly or indirectly infringe Sidel’s two patents. At the time the action was filed, neither patent had been granted, but a notice of intention to grant under Rule 71(3) EPC had been issued.

In April, Sidel filed applications to opt both patents out of the UPC and lodged a preliminary objection, requesting that the Court of First Instance dismiss Omnia’s action. Later in April, both patents were granted.

The hearing took place in early September via videoconference. In its decision, the division held that it is possible to bring such an action before the UPC prior to the grant of a patent.

UPC takes Italian approach

Regarding the fundamental significance of the judgment for pre-granted patents, the panel, comprising presiding judge Ulrike Voß, Bart van den Broek and Nathalie Sabotier, ruled: “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.”

In some jurisdictions, such as Italy, patent applications can be asserted and enforced against third parties before they have been granted. Whilst there are hurdles relating to criteria such as the publication of translated claims or communication to the third party, it is not necessary to wait for the patent to be granted. It is therefore interesting that the UPC is now also following the Italian approach.

The next step in these proceedings is a hearing before the Paris central division concerning the action for a declaration of non-infringement.

The French company Sidel worked with Véronique Pede of Gevers IP Law in Belgium and Agata Sobol of Lexsential in Milan.

The Italian company Omnia is working on this case and other IP projects with its regular advisers, Lorenzo Battarino and Luca Pellicciari from the Italian law firm Trevisan & Cuonzo.