Munich Local Division – You shall not use boilerplate language when defending dependent claims!

In a recent ruling by the Unified Patent Court's Munich Local Division, the comprehensive examination of DexCom, Inc.'s patent EP 3 797 685 revealed significant insights into the judicial approach towards patent validity at the UPC. One of our previous blog entries detailed the court's deliberations on novelty and inventive step, highlighting the stringent requirements for describing technical effects in European patent law. After a second reading there is even more…

Judicial Scrutiny of Individual Patent Claim

Contrasting with the practice at the European Patent Office (EPO), where a single invalid claim will lead to the revocation of an entire patent, the Munich Local Division's approach seem to align more closely with that of the Federal Patent Court in Germany. Here, each claim is meticulously examined to ascertain its individual validity. 

Risks of Generic Defense in Revocation Proceedings

The decision also illustrates a crucial caution for patent holders: the peril of relying on generic language to defend dependent claims (or auxiliary requests). In this instance, DexCom's defense of its dependent claims merely mirrored the arguments for claim 1, without specific justifications for each dependent claim. The Munich Local Division, reflecting this approach, generalized that if no distinct arguments are presented for dependent claims, they too must fall if the main claim is invalidated. This outcome highlights the importance of a detailed and specific defense strategy, particularly under the scrutiny of the UPC.

Key Takeaways

• The UPC Munich Local Division examines each patent claim separately for validity, contrasting with EPO's practice where a single invalid claim can affect the entire patent.
• Using generic defenses for dependent claims risks invalidation; specific arguments are required for each claim under UPC scrutiny. Presumably the same must apply for auxiliary requests.