2.23.9.5A Allowability and Omnibus Claims

Note: The information in this part only applies to:

•  requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013, and standard patents granted on such applications.

•  requests to amend filed on or after 15 April 2013 for innovation patent applications, and innovation patents where a request for examination was not filed before 15 April 2013, or the Commissioner had not decided before 15 April 2013 to examine the patent.

For all other requests to amend, see 2.23.9.5 Allowability and Omnibus Claims.

In this topic:

Under sec 40(3A), the claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention.

In the limited circumstances where it would be absolutely necessary to define the invention in terms of an omnibus claim, the applicant may need to amend the claim before the application can be accepted.  Alternatively, where an omnibus claim is not permissible, the applicant may wish to substitute the omnibus claim with another form of claim.  When considering the allowability of such amendments, the scope of the omnibus claim prior to amendment may become relevant.

In view of the restrictive provisions of sec 102(2)(a), the exact meaning of omnibus claims is of importance, particularly where the applicant files a completely new set of claims, or seeks to replace an omnibus claim with another form of claim.  

For information on the interpretation and meaning of omnibus claims, see 2.11.2.3.9A Omnibus Claims.

Substituting Omnibus Claims

Omnibus claims referring to "each and every novel feature" and "the features individually and collectively" are indeterminate in scope and cannot be considered as defining any invention at all.  It follows that, as a general rule, they provide no basis upon which to propose amendments allowable under sec 102(2)(a).

However, in Irish's Application (1966) AOJP 321, the only claim read:

"All of the improvements herein disclosed individually and in combination".

At page 322 it was stated:

"The original claim, by no stretch of imagination, can be called clear and succinct. It does not attempt to set out in the claim a statement of any form of mechanical construction. However, by virtue of the words "all of the improvements herein disclosed" it imports any form of improved construction that is identified in the body of the specification as constituting the invention."

The claim which was ultimately allowed was narrow in scope and in that particular case, closely followed the consistory statement given in the provisional specification.  However, this case does not serve as a precedent for situations in which no appreciation of the invention may be derived at all.

In Picton Hopkins and Sons Pty. Ltd.'s Application (1965) AOJP 3118, the only claim read:

"A building partition having the features of improvement, collectively and individually as disclosed".

In this case, amended claims, narrow in scope, were allowed to the building partitions specifically disclosed as the invention in the specification.

Necessary Omnibus Claims

Where an omnibus claim is absolutely necessary to define the invention, its scope should be reassessed each time amendments are proposed.  Amendments to the body of the specification, the claims, the drawings, the graphics or the photographs may result in new objections applying to omnibus claims under the provisions of sec 40(3A), sec 102(1) and sec 102(2).  In particular, where a proposed amendment broadens the scope of an omnibus claim, examiners should consider whether the amendment would add new matter, contrary to sec 102(1).

Insertion of Omnibus Claims

An amendment of a specification to insert an omnibus claim is not allowable (unless the omnibus claim is absolutely necessary to define the invention):

• during examination (sec 40(3A)); or
• after acceptance or grant (sec 102(2)(b)).​​​​​​​