Omnibus claims are claims which refer directly to the specification and/or drawings of an application. These are commonly of the form “A [product or process] substantially as hereinbefore described with reference to any one of the Examples [or to any one of the accompanying drawings]”.

Such claims were commonly inserted into Australian patent applications both to ensure protection for at least the exemplified embodiment(s) of a claimed invention and to guard against any inadvertent weaknesses in the wording of the independent claims.

However omnibus claims were largely ruled out by the Intellectual Property (Raising the Bar) Act 2012, which introduced subsection 40(3A): “the claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention”. This subsection applies to applications for which a request for examination was filed after 15 April 2013 and has led to many practitioners viewing omnibus claims as totally off-limits for such applications. As will be seen below, this is not entirely the case.

The new subsection does provide an exception: “unless absolutely necessary to define the invention”. The question therefore arises how one defines “absolutely necessary”.

In a recent prosecution matter for a post-Raising the Bar patent application, our firm was faced with this question. The applicant wished to claim a substance which was characterised by a spectrum which was supplied in the specification. The Examiner objected to an omnibus claim for this substance on the basis of ss.40(3A). As the only practical way to describe the substance was by way of the spectrum, it appeared that either such a claim should be considered to be within the exception of the subsection or else it would be necessary to include the spectrum in the claim itself. However Schedule 3 paragraph 8(3)(a) of the Patents Regulations 1991 prohibits the latter option: “A claim: (a) must not include a drawing”. It was therefore accepted by the Office that this represents a case in which it is “absolutely necessary” to refer to the drawings in order to define the invention.

The restriction on omnibus claims was introduced in the Raising the Bar Act in Schedule 6 (Simplifying the IP system). The Explanatory Memoranda to this Act (Item 43: Omnibus claims) indicated that “… defining the claims in a general and nonspecific way leads to a lack of clarity as to the exact scope of the monopoly. As far as possible, it is desirable that a claim should be free-standing, so that any person reading the claim will be able to ascertain the exact scope of the monopoly from the face of the claim.” Judicial pronouncements on omnibus claims have generally not found them to lack clarity. For example in Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331 at 153 Hely J stated: “For there to be be an infringement of [the omnibus claim] the accused product would need to have the same appearance as the product shown in the drawings”. Similarly in Lewis v Hall (2005) 68 IPR 89 at 31, Lee, Moore and Nicholson JJ stated: “the usual purpose thereof is as a fail-safe claim in the event that preceding and broader claims are found to be unclear or to be too broad in which case the patentee will seek to rely upon the clarity, particularity and limitations of a drawn embodiment to define the claim to monopoly”. However the goal of making claims “free-standing” may be considered laudable in principal, as may the goal of aligning Australian practice with major overseas jurisdictions.

The Explanatory Memoranda do acknowledge that in certain cases it may be unavoidable to reference specific aspects in the specification in order to define the invention. By way of example the Memoranda note that it may be necessary to reference a spectroscopic profile or a specific feature in a figure or drawing in a claim in order to fully define the claimed invention. The case described above is therefore quite consistent with the intention of the legislation as reflected in the Explanatory Memoranda.

It therefore remains the case that omnibus claims are to permitted, although only in circumstances where no practical alternatives are available to define the invention. The routine use of omnibus claims to protect exemplified embodiments, as was previously common practice, appears unlikely to be permitted for post-Raising the Bar applications.