5.5.4.3 Omnibus claims

Also in this Chapter:

• 5.5.4.1 The claims are construed as a legal document
• 5.5.4.2 Presumption against redundancy
• ​​​​​​​5.5.4.4 Swiss claims
• 5.5.4.5 Product by process claims
• 5.5.4.6 Parametric claims
• 5.5.4.7 ‘For use in’, ‘when used’, and similar wording in claims
• 5.5.4.8 ‘Comprises‘, ‘includes‘, ‘consists of‘, and ‘contains‘ in claims
• 5.5.4.9 Reference numerals in claims
• 5.5.4.10 Relative terms
• 5.5.4.11 ‘Substantially‘, ‘about‘, and ‘generally’
• 5.5.4.12 Appended claims

Key Legislation:

Patents Act

• s40 Specifications  

​​​​​​​Related Chapters: 

• 5.6.3.3 Examining Omnibus claims
• 5.6.7.1 Claims are clear and succinct

On this page

• Characteristics
• Claim construction:
  • Omnibus claims that are acceptable
  • Omnibus claims that are no acceptable.

Characteristics

An omnibus claim defines an invention by reference to all or part of the specification (for example, the drawings or examples).

Omnibus claims generally contain two parts:

• the subject matter to be protected by the claim; and
• words that refer back to the part of the specification (for example, the drawings) that is relied on to define the monopoly.

These claims often use the wording ‘substantially as described herein’ or ‘substantially as described with reference to the drawings’.

Claim construction

Generally, 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.

When interpreting an omnibus claim, examiners should:

• identify the limiting features of the claim; and
• identify the specific form of those features in accordance with the description.

To identify the features of an omnibus claim, consider the text of the specification, such as the consistory statement, objects of the invention, and examples. If there is a conflict between the different parts of the specification, the omnibus claim will have an indeterminate scope.

The words ‘substantially as described herein’ are 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 paragraphs 69 - 80).

Where ‘substantially as described herein’ is followed by a phrase like ‘with reference to the examples’ or ‘with reference to the accompanying drawings’, the features are to be construed as being limited to the specific form of those features described in those examples or drawings. That is, omnibus claims do not claim everything indicated or shown in the examples or drawings since there may be optional features in the examples or drawings that do not form part of the claim.

Omnibus claims that are acceptable

An omnibus claim is only acceptable if its references to the body of the specification are absolutely necessary. This is because s40(3A) states that the claims must not rely on references to the description, drawings, graphics, or photographs unless this is absolutely necessary to define the invention.

To determine whether references to the description, drawings, graphics, or photographs are absolutely necessary to define the invention, consider:

• 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; and
• would the inclusion of the information make it easier to construe the claim or more difficult?

If it would be impractical to insert the information into the claim, it is acceptable to refer to the description, drawings, graphics, or photographs. For example:

• if the invention is a chemical composition that can only be defined by reference to a particular spectrum or to an apparatus with a certain feature that can only be defined by reference to a drawing, this reference is acceptable; and
• if the invention is a nucleotide and/or amino acid sequence that would be impractical to include in a claim, a reference to the sequence listing part of the specification is acceptable.

If it is determined that 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.​​​​​​​

Omnibus claims that are not acceptable

If claims rely on references to the description, drawings, graphics, or photographs that are not absolutely necessary, the examination report will need to include an appropriate objection (for example see PERP code [E10]).

In general, no further search and/or examination should be conducted in respect of the omnibus claims and the report should indicate that further search and/or examination of such claims is reserved. 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. Examiners are to take into account the facts of the case.

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.