The interpretation of omnibus claims under Australian law – 8 July 2016
Omnibus claims were commonly used in Australia until 15 April 2013 when our law was changed. The changes, in effect, outlawed the routine use of omnibus claims in new patent applications. The explanatory memorandum accompanying the changes included:
‘Unlike most other countries, Australia has generally permitted omnibus claims. This gives rise to certain problems, where defining the claims in a general and non-specific way leads to a lack of clarity as to the exact scope of the monopoly’ [citation omitted].
Despite the changes in the law, many patents remaining in force have omnibus claims so their interpretation remains of interest. Indeed, The Full Federal Court of Australia [1] recently had cause [2] to consider the construction of the following omnibus claim:
‘A liquid dispensing apparatus, substantially as described with reference to the drawings and/or examples’.
The decision was an appeal from a controversial decision of a lower court [3] in which this claim (presented as claim 9) was held to be of broader scope than an earlier independent claim (claim 1).
Despite the lack of clarity mentioned in the explanatory memorandum and the controversy surrounding the decision of a lower court, the Full Court’s judgement included:
‘The principles of claim construction—including the construction of omnibus claims such as claim 9—are not controversial and need not be repeated in these reasons’. [4]
These principles include that the claim must be interpreted in the context of the patent specification read as a whole. The Full Court went on to explain:
‘Given that the consistory statement for the first aspect of the invention finds expression in claim 1, and given that the specification makes clear that the example given is of the first aspect of the invention, it must follow that the invention defined in claim 9 cannot be wider in scope than the invention defined in claim 1 …
… the use of the word “substantially” … does not extend the definition of the invention to “the substantial idea” disclosed by the specification and shown in the drawings …
The word “substantially” provides no warrant for departing from what the specification itself mandates to be the essential features of the invention … whatever work the word “substantially” is to perform in claim 9, it cannot transform a feature made essential by the description of the invention into one that is now inessential’. [5]
Whilst the interpretation of an omnibus claim will always require careful consideration on a case by case basis and some degree of estimation, this decision suggests that:
- omnibus claims will generally be interpreted to be of narrower scope than the ‘conventional’ claims accompanying them; and
- common shorthand expressions such as ‘the claims cover the preferred embodiment plus insubstantial variations thereof’ remain appropriate.
[1] The court of first appeal for Australian patent matters
[2] In GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90
[3] The Federal Court
[4] At paragraph 69
[5] At paragraphs 77 to 81
