2.11.2.3.9 Omnibus Claims

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed before 15 April 2013.  
  • innovation patents with an examination request filed before 15 April 2013.
  • innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see 2.11.2.3.9A Omnibus Claims.

Overview

An omnibus claim defines a monopoly by reference to the whole body of the specification or to a particular part thereof, such as the drawings or the examples. The words "substantially as described" or "substantially as described with reference to the drawings" are commonly used. An omnibus claim generally contains two parts:

i. the subject matter to be protected by the claim; and

ii. words that refer back to the specification or that part thereof which is relied upon to define the monopoly.

Omnibus claims can be as important as any other claim. In Raleigh Cycle Co. Ltd. v H Miller and Co. Ltd. (1948) 65 RPC 141, all claims except the omnibus claim were found to be invalid. Consequently, the omnibus claim was all that was left to the patentee.


Claim Construction

Omnibus claims which contain words such as "substantially as described herein" are to be construed as being limited to the features of the invention identified by the subject of the claim, in their preferred form as described in the specification (GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 at [69]-[80]).  As a general rule, an omnibus claim is directed to the broadest form of the invention identified by the claim, with the various features of that invention being in their preferred form. In order to identify the features of an omnibus claim, examiners should have regard to the text of the specification, such as the consistory statement, the objects of the invention and the examples. Where there is a conflict between different parts of the specification, then the omnibus claim will have an indeterminate scope.

Where these words are followed by the text "with reference to the examples" or "with reference to the accompanying drawings" and the like, the features of the omnibus claim are to be construed as being limited to the specific form of those features described in the examples or in the drawings, as the case may be. That is, omnibus claims do not claim the entirety of what is indicated or shown in the examples or drawings, since optional features that might appear in the examples or drawings do not form part of the claim.

Where the omnibus claim refers generally to the examples or drawings, any prior art examples or drawings contained in the specification are taken to be outside the scope of the omnibus claim, on the basis that this would be an "absurd result" (see Henriksen v Tallon Ltd [1965] RPC 434). However, if the prior art examples or drawings are referred to specifically in the omnibus claim (such as by number or letter), then these are to be construed as being within the scope of the claim and a novelty objection should be taken accordingly.

The construction of an omnibus claim which does not unambiguously set forth its broad features by:

  • reciting them;

  • referring to another claim which recites them; or

  • employing wording which invokes the essential features of the invention;

is more difficult. Where the features of the omnibus claim cannot be identified, the claim will have an indeterminate scope. However, as such claims are plainly of no consequence to the overall scope of the monopoly, no objection should be taken to them. The only exception is where there are no other claims apart from these in the specification, as in this case they will determine the overall scope of the monopoly.

Examples of this type of claim are:

  • claims referring to "each novel feature"; and
  • claims referring to "the features individually and collectively”.

Examination Practice

An objection should only be taken to the form of words used in an omnibus claim if:

  • the scope of the claim cannot be clearly determined; or
  • the scope of the claim, properly construed, encompasses the prior art;

as discussed in ‘Claim Construction’ above.