2.11.2.3.9A Omnibus Claims

Date Published

Note: The information in this part only applies to:

•  standard patent applications with an examination request filed on or after 15 April 2013.
•  innovation patents with an examination request filed on or after 15 April 2013.
•  innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

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

Overview

An omnibus claim defines an invention by reference to the whole or part of the specification, 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.

Under sec 40(3A), the claims must not rely on references to the description, drawings, graphics or photographs unless absolutely necessary to define the invention.  Consequently, omnibus claims are allowable where the invention can only be defined by reference to a specific detail in the description, drawings, graphics or photographs.

In determining whether it is absolutely necessary for a claim to refer to the description, drawings, graphics or photographs to define the invention, some factors to consider include:

  • What information would need to be inserted into the claim instead of referring to the description, drawings, graphics or photographs?
  • Can that information be described in words?
  • How much information would need to be inserted?
  • Would the inclusion of the information assist or hinder the construction of the claim?

It is acceptable to include information in a claim by reference to the description, drawings, graphics or photographs where it would be impractical to include the information directly.  Thus, for example:

  • where the invention is a chemical composition that can only be defined by reference to a particular spectrum, or an apparatus with a certain feature that can only be defined by reference to a drawing, that reference is acceptable.
  • where the invention is nucleotide and/or amino acid sequence(s) and the nature of these makes it impractical to include them in a claim, a reference to the sequence listing part of the specification is acceptable (see also 2.11.6 Claims are Succinct).

Reference numerals in a claim that refer to features in a drawing, graphic or photograph are generally acceptable, provided they do not limit the scope of the claim (see also 2.11.2.3.5 Reference Numerals in Claims).  

Where a claim states that a certain term or feature is ‘as herein defined’, and the specification uses a dictionary to indicate that the term or feature has a particular meaning, this is generally acceptable (see also 2.11.2.2.5 Dictionary Principle).


Examination Practice

Where claims rely on references to the description, drawings, graphics or photographs and this is not absolutely necessary (noting the considerations above), the report should include the following objection:

'Claims X-Y do not comply with subsection 40(3A) as they rely on references to the description and/or drawings, graphics or photographs that are not absolutely necessary to define the invention.'

or words to that effect (see also PERP code [E10]).

In general, no further search and/or examination should be conducted in respect of the omnibus claims and examiners should indicate in their report that further search and/or examination of such claims is reserved.  


Note: Where opinion on omnibus claims is reserved, such claims should not be referred to in the ‘Summary of Novelty, Inventive Step and Patentable Subject Matter’ section of the examination report.

However, there may be circumstances where reservation of opinion is not warranted.  A decision whether to conduct search/examination is a matter of judgement on the part of the examiner taking into account the facts of the case.

In those situations where it is absolutely necessary for the claims to rely on the description, drawings, graphics or photographs, the claims are to be searched and/or examined according to the usual procedures.

Where examiners are in doubt as to whether it is absolutely necessary for a claim to rely on references to the description, drawings, graphics or photographs, it is reasonable for an objection to be raised and for the applicant or attorney to explain why the reference is necessary.