An opt-out filed by the registered owner of a European patent stays valid even if a court later rules that the owner was never entitled to the patent, and the true owner’s UPC opt-out withdrawal fails if anyone filed a national action first. That is the result of two orders in Silimed v Polytech, issued by the Hamburg Local Division of the Unified Patent Court (UPC) on 7 May 2026 and by the President of the Court of Appeal on 29 June 2026. Brazilian implant maker Silimed won its patent back in Germany but could not take it to the UPC. Any company that buys, recovers or inherits European patents should take note.
Key takeaways
- An opt-out lodged by the person entered in the national registers is valid; a later entitlement judgment does not undo it, because under German law the transfer has no retroactive effect.
- A withdrawal of the opt-out is ineffective if a national action within the UPC’s jurisdiction was brought before the withdrawal was entered (Article 83(4) UPCA, Rule 5.8 RoP).
- In this case the blocking action was a revocation claim filed in Germany one day after Silimed’s warning letter.
- The opt-out status of every European patent should be part of acquisition and recovery due diligence.
What happened in Silimed v Polytech?
The facts below are taken from the Hamburg Local Division order of 7 May 2026 (UPC_CFI_481/2026) and the decision of the President of the Court of Appeal of 29 June 2026 (UPC_CoA_066/2026).
| Date | Event |
|---|---|
| 25 November 2015 | EP 2 581 193 (manufacturing of implants) is granted to Polytech Health & Aesthetics GmbH. |
| 2017 | Silimed Indústria de Implantes, based in Rio de Janeiro, sues in Frankfurt for transfer of all national parts. |
| 30 March 2023 | Polytech, still the registered owner, opts the patent out of the UPC. |
| 5 January 2026 | The Frankfurt Higher Regional Court’s transfer judgment of 28 November 2024 becomes final. |
| 8 January 2026 | Silimed sends Polytech a warning letter with a 24-hour deadline. |
| 9 January 2026 | PTH&A Management GmbH, a company of the Polytech group, files a revocation action against the German part at the Federal Patent Court. |
| 4 and 5 February 2026 | Silimed withdraws the opt-out and sues nine defendants for infringement at the UPC’s Hamburg Local Division. |
| 7 May 2026 | Hamburg holds the withdrawal ineffective and dismisses the action as inadmissible. |
| 29 June 2026 | The President of the Court of Appeal refuses to remove Polytech’s opt-out as “unauthorised”. |
Why the opt-out filed by the “wrong” owner remained valid
Under Article 83(3) of the Agreement on a Unified Patent Court (UPCA), the proprietor may opt a classic European patent out of the UPC’s exclusive competence during the transitional period. Rule 8.5 of the Rules of Procedure (RoP) treats as proprietor the person entitled to be registered under national law, with a rebuttable presumption in favour of whoever appears in the national registers.
Silimed argued that Polytech had never been entitled. Both orders rejected that view. The German entitlement judgment ordered a transfer, which takes effect when it becomes final and not backwards. Until then the registered owner kept full power to act on the patent, including opting it out. Hamburg added that the register must show everyone which patents fall under the UPC.
Why the UPC opt-out withdrawal failed
Article 83(4) UPCA lets a proprietor withdraw an opt-out at any moment “unless an action has already been brought before a national court”. Rule 5.8 RoP makes the withdrawal ineffective if, before it is entered in the register, an action was commenced in a UPC member state in a matter the UPC could also hear, such as revocation.
The Hamburg court held that the German revocation action was brought on 9 January 2026, when the Federal Patent Court received it, and reached the same answer applying Article 32 of the Brussels Ia Regulation. Arguments that the claim breached a German court order and came from a related company failed: PTH&A was a separate third party. The opt-out therefore stayed in force and the UPC lacked competence. The Hamburg order was a final decision that could be appealed within two months.
What this means for your business
A Latin American patentee, a European patent and a German dispute: a common mix in our corridor. Practical steps:
- Check the opt-out status of every European patent you acquire or recover, and search for national actions already pending in UPC states.
- If you want the UPC, withdraw the opt-out before any warning letter, licence negotiation or public statement that might prompt a pre-emptive national action.
- Remember Rule 5.10 RoP: once a withdrawal is entered, the patent cannot be opted out again.
- In entitlement or ownership disputes, plan the forum question alongside the transfer: a national judgment will not rewrite the UPC register for you.
Our European patent and UPC strategy team can review the opt-out position of a portfolio before a transaction or an enforcement campaign.
Where patentees get the opt-out wrong
- Sending the warning letter first. Here the national action was filed the day after the letter, and that sequence decided the forum.
- Skipping the opt-out in due diligence. A buyer that plans UPC enforcement may find the patent locked out by an earlier owner’s choice.
- Splitting advisers. When one firm runs the entitlement case, another the UPC and a third the national actions, nobody owns the timing.
Frequently asked questions
Can I withdraw a UPC opt-out after a national case has started?
Not effectively, if the national action concerns a matter the UPC could also hear, such as infringement or revocation, and was brought before your withdrawal was entered in the register. Article 83(4) UPCA and Rule 5.8 RoP make the withdrawal ineffective, and the patent stays outside the UPC, as the Hamburg Local Division held in Silimed v Polytech.
Does winning an entitlement case cancel the previous owner’s opt-out?
Not under German law, according to both orders in Silimed v Polytech. The transfer takes effect when the judgment becomes final, without retroactive effect, so the opt-out filed by the registered owner at the time remains valid. The new owner can withdraw it, but only if no national action blocks the withdrawal.
Can IP Global Guard review the UPC position of patents we are buying?
Yes. As part of patent due diligence we check ownership records, opt-out status and pending national actions, and work with European patent attorneys and UPC representatives on the forum strategy. For buyers from Latin America and Africa, we coordinate the European side from a single point of contact.
How IP Global Guard can help
Silimed v Polytech shows that the UPC forum can be decided by a filing made one day earlier in a national court. IP Global Guard, the IP services line of META Channel Corporation Limited, coordinates patent acquisitions, recoveries and enforcement across more than 25 jurisdictions in Europe, Latin America and Africa, with European patent attorneys and UPC representatives on the European side and our IP litigation and transactions team on the contracts.
Share the list of European patents you are acquiring or recovering and your enforcement timeline. We will check their opt-out status and tell you in what order to act. Speak to our patent team.
This article is general information, not legal advice, and reflects the position at its publication date.
Sources
- UPC, Hamburg Local Division, order of 7 May 2026, UPC_CFI_481/2026 (Silimed v Polytech)
- UPC, decision of the President of the Court of Appeal of 29 June 2026, UPC_CoA_066/2026
- Agreement on a Unified Patent Court, OJ C 175, 20 June 2013
- UPC, Rules of Procedure, consolidated version in force from 1 January 2026
