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Death of the omnibus claim


21st Apr 2016

The UK Intellectual Property Office (IPO) has recently announced a series of proposed changes to the ‘Patent Rules’, the secondary legislation that complements the 1977 Patents Act. For the most part, the proposed changes seem either sensible or inconsequential1. However, one proposed change has turned a few heads. In the proposals, the IPO sets out its intention to “prohibit the use of omnibus claims except where absolutely essential”. What are they on about?

The omnibus claim

Turn to the back of a UK patent, particularly an older one, and the chances are you will find a claim that looks something like this:

a [thingy] substantially as described herein with reference to the accompanying drawings”

This is an omnibus claim. The idea is that, if every one of your other claims is found to be invalid, the omnibus claim might be able to give you protection for a specific embodiment of your invention that you describe and show in any drawings. They are a last ditch attempt to cling to some scrap of protection when things are looking bleak. Indeed, there have even been cases where precisely this has happened. In Raleigh v Miller (1948) 65 R.P.C. 141 HL, the validity of a patent entitled “Improvements in Electric Generators” was in question. It was held that four out of the five claims were invalid for various reasons while claim 5, the omnibus claim, was found to be valid and infringed with Lord MacDermott stating that,

“I think claim 5 falls to be distinguished on the ground that it points back only to that part of the description which explains the detail of the accompanying drawings and which… is clearly segregable from the more general descriptive passages. I am therefore of opinion that claim 5 is a narrow claim and good”.

Additionally, in Surface Silos v Beal [1960] R.P.C. 154, in a patent entitled “Improvements in or relating to Silos” the only claim found to be valid and infringed was claim 4, the omnibus claim. However, it really cannot be overstated just how rare such a ruling is.

As a result of cases such as these, for decades patent attorneys have diligently added an omnibus claim when drafting UK patent applications, just to be on the safe side. We are a very cautious bunch after all.

The UKIPO’s position

In its proposal to prohibit omnibus claims in patent applications, the IPO highlights the fact that they are incompatible with both the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) under which omnibus claims are prohibited unless “absolutely necessary”2. In fact, jurisdictions that allow omnibus claims are few and far between and are almost exclusively limited to former British colonies. New Zealand and South Africa still permit omnibus claims while Australia and Canada only allow them in exceptional circumstances. In the majority of jurisdictions, omnibus claims are prohibited altogether.

The IPO also states that only about 30% of UK patent applications actually include an omnibus claim. It notes that the vast majority of UK patents are granted under the EPC which effectively prohibits omnibus claims anyway. The IPO comments, with an almost palpable sense of glee, that while it is possible to amend a European Patent validated in the UK to include an omnibus claim, the last time this was done was in 2011. It concludes, probably fairly, that the omnibus claim will not be missed.

The beginning of the end?

The IPO is not alone in its disapproval of the omnibus claim. Despite their seemingly ubiquitous presence in UK patent specifications, there is a glaring problem with omnibus claims. Their scope of protection is notoriously very hard to pin down.

Traditionally, they were thought of as having a very narrow scope of protection in keeping with the idea that they are a patent proprietor’s last resort. However, what if the specification includes many different figures and embodiments? What if the specification includes references to other documents? Should the statement of invention be taken into account? What is meant by the word substantially? All of these questions make is very hard to determine whether a specific act infringes an omnibus claim. As a result, courts have in the past done their best to avoid having to interpret them. This difficulty was observed in Daikin Koygo Co Ltd (Shingu’s) Application [1974] R.P.C. 559 in which an opponent sought to rely on an omnibus claim of a previous patent to invalidate the claims of the Daikin Koygo Co Ltd application. The opponents failed and Lord Lawton, when considering the omnibus claim in question stated that, “[the omnibus claim] is so obscure as to its meaning that it is incapable of being a claim defining the scope of the invention”.

In addition to this, omnibus claims appear to be approaching the end of their useful life anyway. Today’s patent applications typically have many more claims then their mid-20th century predecessors. As a result, the chances of every claim other than the omnibus claim being invalid today seems unlikely. Furthermore, since the signing of the EPC, UK courts have adopted a less literal approach to claim interpretation3 meaning that today’s judges seem more inclined to use the description and drawings to interpret the claims than they once were. This more relaxed approach to claim interpretation makes a claim directed specifically to the description and the drawings (i.e. the omnibus claim) far less valuable.

These issues were highlighted in Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4 in which Judge Colin Birss stated that the circumstances in Surface Silos are unlikely to occur in modern practice and suggested that, “UK IPO might like to consider whether omnibus claims serve any useful purpose today save in exceptional circumstances”.

The IPO clearly took the hint.

Conclusion

In theory, the removal of the omnibus claim should make specifications easier to interpret thereby providing greater legal certainty for the public. In practice, I suspect the amputation of this vestigial claim will not affect many people at all. However, the change could be viewed as emblematic of a patent system that is gradually being moulded into greater harmonisation with Europe and beyond.

So prepare to bid farewell to this relic of our patent system. This omnibus terminates here (possibly).

  1. A full list of the proposed changes can be found here.
  2. See Rule 43(6) EPC and Rule 6.2(a) PCT.
  3. See Article 69 EPC.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Adam Kelvey
Associate
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