The Full Federal Court has recently handed down its decision in the appeal by GlaxoSmithKline (GSK) against the earlier finding by Justice Rares that GSK's syringe for use with its "Children's Panadol" range infringed Reckitt Benckiser's (Reckitt) patent.

As set out in our earlier post, the earlier decision of Justice Rares effectively found that the omnibus claim of Reckitt's patent was broader in scope than any of the other claims. As a result, his Honour found that one of GSK's products did not infringe claim 1 of Reckitt's patent, but did infringe the omnibus claim. This decision was unusual because an omnibus claim, being a claim that references the examples and drawings described in the patent specification, is generally considered limited to the particular features shown in the drawings/examples, and so is narrower than a general claim which seeks to refer to the features of the invention in broad terms.

GSK had two products, one in which the cylinder of the syringe was substantially uniform along its diameter (Product A), and a later product in which the nose of the cylinder narrowed at its tip (Product B). Justice Rares at first instance interpreted claim 1 to require a barrel of substantially uniform diameter, so while Product A infringed claim 1, Product B did not. However, in relation to the omnibus claim, Justice Rares placed a great degree of emphasis on the word "substantially" in "substantially as described" in the omnibus claim, and held that the scope of the claim extended to products that took the "substance" of the invention. The narrowed tip of Product B was found to take this "substance", so infringed claim 9 of Reckitt's patent.

The Full Court, constituted by Chief Justice Allsop and Justices Yates and Robertson, looked at the specification as a whole and considered the role of both the examples and drawings in the specification, which the Court stated was "to better understand the various aspects of the invention", with the drawings being of a preferred embodiment of the invention.

The specification was directed to two aspects; a product and a method. The Court held that the first aspect was described in a consistory statement in the specification, which was identical to claim 1. As claim 9 was based on an example of that aspect, the Full Court held that it could not possibly be wider in scope than claim 1.

In relation to Justice Rares' interpretation of "substantially" in "substantially as described" in claim 9, the Court held that this word "does not extend the definition of the invention to "the substantial idea" disclosed by the specification and shown in the drawings". Furthermore, the Court stated that "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 into one that is now inessential". As a syringe having a barrel of substantially uniform diameter was made essential by the description, claim 9 must therefore include this feature. As GSK's Product B did not have a uniform diameter, it was therefore held not to infringe claim 9 of Reckitt's patent.

The approach taken by the Full Court in this case is consistent with the approach previously taken by the courts in relation to omnibus claims. Under the reforms introduced by the Intellectual Property (Raising the Bar) Act 2012 (Cth), it is now more difficult to obtain patent protection for an omnibus claim, as reference can only be made to the examples and drawings where "absolutely necessary" to define the invention. However, most of the currently granted patents and a number of patent applications, many of which are still pending before IP Australia, are not restricted by the Raising the Bar amendments. For these patents and patent applications, omnibus claims can still be useful "back-up" claims if other claims are found to lack validity but are of limited benefit in infringement proceedings beyond an essential copying of the preferred embodiment.