Omnibus claims are added to patents in some jurisdictions as a catch all warning to potential infringers. They generally take the form of “the product/method substantially as described with reference to the drawings and/or examples”.

In the recent case of Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No 5) [2015] FCA 486, the trial judge found for the defendant, that all the claims were not infringed, except one, being the omnibus claim.

The case dealt with flat-nosed syringes used in dispensing medications from bottles. GlaxoSmithKline had proposed an alternative design that skilfully avoided the language limitations of all of
the patentee’s main claims. The judge carefully examined the authorities on omnibus claims, which pointed to such claims being a catch all, which appeared to be aligned with a doctrine of equivalents argument familiar to those practising in the United States. The judge found that the defendant had taken the substance of the invention and was therefore caught by the omnibus claim.

The Australian Patent Office attempted to limit the use of omnibus claims by legislative amendments in 2013, and so it may be difficult to continue to insert omnibus claims in new applications examined after this date. The limitations were introduced in an attempt to align Australian laws with those of other jurisdictions. However, complex legal arguments, as a result of the Reckitt
Benckiser case, may allow a limited continued life in Australian applications, especially after this case arguably shows that they are “absolutely necessary”. The consequences of their inclusion, as illustrated by the above case, are likely to be significant.

This article by Shelston IP Partner, Peter Treloar, first appeared in Managing Intellectual Property magazine, July/August 2015.