The action for declaration of non-infringement (DNI) is the mirror of the infringement action: it is not the proprietor who initiates proceedings, but the operator—actual or potential—who takes the initiative to have it established that they are not infringing. It is provided for in Article 32, paragraph 1, point b, of the Agreement on a Unified Patent Court and governed by Rules 61 to 74 of the Rules of Procedure.

Overview

The concept is simple: rather than waiting, with the sword of Damocles hanging overhead, for the proprietor to deign (or not) to bring an infringement action, the operator themselves seizes the court to obtain a ruling that their product or process does not fall within the scope of the patent. This is a tool for legal certainty, valuable before an industrial or commercial launch.

Conditions for the Action

Who May Bring the Action

The person who performs, or proposes to perform, a specific act may bring an action against the proprietor of the patent (or the licensee authorized to bring an infringement action), Rule 61 of the Rules of Procedure.

Standing to Sue

The court is not seized in a vacuum: the action is only admissible if (Rule 61 of the Rules of Procedure):

  • the proprietor (or the licensee) has alleged that the act constitutes infringement; or
  • failing that, the claimant has requested in writing from the proprietor a declaration of non-infringement, and the latter has refused or failed to provide it.

In other words, there must be at least a minimal threat: an accusation, or at the very least an awkward silence in response to a request for a declaration.

Competent Division

Unlike the infringement action, which is often brought before a local or regional division, the action for declaration of non-infringement falls under the jurisdiction of the central division (Article 33, paragraph 4, of the Agreement on a Unified Patent Court). The logic is clear: there is not yet a “place of infringement” to link to a local division.

Claimant’s Declaration

The claimant files a statement of non-infringement with the registry. This must contain the details set out in Rule 13.1 (points a to h)—as for an infringement action—as well as confirmation that the conditions of Rule 61 are met (Rule 63 of the Rules of Procedure).

Payment of a Procedural Fee

The action is subject to a fixed procedural fee (approximately €11,000), according to the fee schedule annexed to the Rules of Procedure (Rule 370).

Procedural Steps

For the rest, the written procedure largely mirrors that of the infringement action (the corresponding provisions of the Rules of Procedure applying identically): notification of the defendant, examination of formal admissibility, appointment of a judge-rapporteur, defense, timetable, and then closure of the written procedure. There is no need to repeat everything here: the details are set out on the page Infringement Action.

Interaction with Infringement Action

This is the sensitive point. If, while an action for declaration of non-infringement is pending before the central division, an infringement action between the same parties and concerning the same patent is brought before a local or regional division within a period of three months, the central division stays proceedings (Article 33, paragraph 6, of the Agreement on a Unified Patent Court and Rule 75 of the Rules of Procedure).

In short: the DNI allows the operator to take the initiative… but the proprietor retains, for three months, the option to regain control by choosing their forum. The details of this scenario are addressed on the page Infringement Action (“Case of an infringement action brought after a declaration of non-infringement action”).

See Also