UPC Clarifies Repercussive Effect of Dependent Claims

November saw the issuance of a number of much-talked about UPC Court of Appeal (COA) decisions, and notable among them was the decision issued in the long-running dispute between Amgen, Sanofi and Regeneron. Whilst much attention has been directed towards the ramifications of the decision in relation to inventive step assessment, the decision addressed a wide range of key topics, including points on interpretation, added subject matter, and sufficiency.

Included amongst the points on claim interpretation was a discussion on what effect, if any, a dependent claim can have on the interpretation of the independent claim. In the present case, the independent claim concerned a monoclonal antibody or an antigen-binding fragment thereof for use in treating or preventing hypercholesterolemia or an atherosclerotic disease related to elevated serum cholesterol levels, or in reducing the risk of a recurrent cardiovascular event related to elevated serum cholesterol levels. At first instance, the Central Division Munich seat (CDM) held that the claim was not limited to a particular amount of lowering of cholesterol levels, as long as some measurable reduction of cholesterol levels occurred. In support of this, the CDM pointed to dependent claims 6 and 7, covering administration of the monoclonal antibody together with at least one other cholesterol lowering agent. The CDM suggested that these claims confirm the understanding of the skilled person that also a (very) small cholesterol-lowering effect caused by the claimed antibodies can be “therapeutically effective” in the sense of the claimed treatments.

However, this interpretation was disregarded by the COA. The COA noted that the question of whether conclusions could be drawn from the subject matter of a dependent claim and its features when interpreting the independent claim was case-dependent. However, the COA set forth the general principle that where a dependent claim only added an additional feature to the independent claim, rather than a more specific description of a feature present in the independent claim, this dependent claim should generally not be used to interpret the independent claim.

Hence, in the present case, the possibility of administering treatment including other cholesterol lowering agents did not negate the requirement that the treatment covered by the independent claim was also required to be “therapeutically effective” on its own, where therapeutic effectiveness requires more than just a minor effect, but indeed a noticeable improvement of the medical condition of the patient.