03 July 2016

Federal Appeals Court Considers ‘Omnibus Claims’

Vintage busThe word ‘omnibus’ derives from the Latin ‘omnis’, meaning ‘all’.  More particularly, the Latin ‘omnibus’ is the plural dative or ablative case of the noun (grammar nerds are getting excited right now), and may therefore be translated as ‘to, for, by, with or from everybody or everything’.  Appropriately, therefore, omnibus is the origin of the same English word referring to a collected edition of multiple works, such as novels.  And our modern word ‘bus’, describing a form of mass transit, is itself a contraction of the word ‘omnibus’, which was used back in the days when such things were still drawn by horses.

To put it bluntly, then, ‘omnibus’ is an old-fashioned word for a variety of old-fashioned things.

One of those things is a type of patent claim, intended to cover all forms of an invention disclosed in a patent application.  The exact form of an omnibus claim varies, but typically goes something like ‘a splendiferous widget substantially as described herein with reference to the accompanying drawings.’  You can see how the patentee of such a claim is trying to hedge her bets, by including the word ‘substantially’.  What even does that mean?  How ‘substantial’ is substantial enough?  How is someone to know whether or not they are infringing such a claim, assuming that they have not copied one of the described embodiments exactly?

It is for precisely this reason that omnibus claims have fallen out of fashion and favour over time.  In most jurisdictions they are no longer permitted (if they ever were), on the grounds that their scope is unclear.  In Australia, they have been banned in new applications as of 15 April 2013 by the Raising the Bar reforms, which added section 40(3A) to the Patents Act 1990, prescribing that a claim ‘must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.’

However, patents and applications that were subject to examination under the former provisions may still validly contain omnibus claims, and so they will continue to be relevant in Australia until at least 2033.  It is therefore significant that a Full Bench of the Federal Court of Australia has recently had a rare opportunity to consider the scope of omnibus claims: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 (‘GSK’).

The court’s decision confirms that, in the majority of cases involving consistently-drafted patent specifications, an omnibus claim should be interpreted to have relatively narrow scope, being restricted by the essential features of the invention as described and defined elsewhere in the specification.

Omnibus – The Original Patent Claims!

To many people, omnibus claims may appear strange and somehow ‘tricky’.  However, they have a history as long as that of patent claims themselves.  Surprisingly, the patent system got by perfectly well without claims of any kind for centuries.  The idea that an inventor should be required to ‘particularly point out and distinctly claim[] the subject matter’ that she regards as being the invention (to adopt the US formulation of the requirement) is a relatively modern one.

I imagine that in the early days of patents, it was enough to roll up to the granting authorities with something that had self-evidently never previously existed.  However, as the pace of technology accelerated, and it increasingly became the case that there was nothing entirely new under the sun, the onus increasingly fell on inventors to be clear about exactly what it was they contended was new and worthy of the protection of the law.  This eventually led to the practice – and ultimately the legal requirement – of including specific clauses at the end of a patent specification to define the scope of protection asserted.

Omnibus-style claims were among the first to be included.  Consider, for example, Thomas Edison’s original US patent on the incandescent light globe, no. 223,898.  The specification concludes with four claims, including:

1. An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth.

4. The method herein described of securing the platium contact-wires to the carbon filament and carbonization of the whole in a closed chamber, substantially as set forth.

If omnibus claims were good enough for Thomas Edison, then they should be good enough for anyone, right?  Well, obviously not.  Most modern inventions are considerably more complex than a light globe, and it will often not be at all clear from the description in a lengthy patent specification just exactly what is meant to be protected and what is not.  And without a reasonably precise definition of the invention, the important modern practice of examining applications in relation to novelty and inventive step would be all but impossible.

Thus, like the word ‘omnibus’ itself, omnibus claims are something of an anachronism.  Their passing – when it finally happens with the expiry of the many patents that still include them – will not be greatly mourned.

The Scope of a ‘Modern’ Omnibus Claim

Omnibus claims exist nowadays in a far richer context that in Edison’s time.  The law has evolved considerably over the past 150 years, both through decisions of the courts and via legislation, to place considerably more stringent requirements on the manner in which applicants describe and define their inventions.  A good quality patent specification must now be clear and consistent in what it says is the invention for which protection is sought. 

An omnibus claim thus no longer stands alone, as it did in Edison’s day, leaving it largely up to the reader to determine from the overall document what it is that the patent covers, and that might be considered an infringement.

In particular, the modern patent specification will typically contain one or more claims in the more usual ‘prescriptive’ format, setting out the specific characteristics or combinations of elements that are said to constitute the ‘essential’ defining features of the invention.  Under the usual practice in Australia (encouraged by numerous court decisions extending all the way up to the High Court) the description will contain consistory statements corresponding with at least the broadest claims, and the drafter of the specification will have (or, at least, should have) taken care to ensure that there is nothing else in the specification that is inconsistent with the scope of the invention as set out in the consistory statements and the claims.

Omnibus claims therefore no longer stand alone.  They exist within the context of all of the other elements of the patent specification, including the complete set of claims considered as a whole.  It should come a no surprise, therefore, that this context affects their scope.

‘Substantially’ the Wrong Answer

In GSK the court was faced with an omnibus claim in a patent owned by Reckitt Benckiser, which recited ‘a liquid dispensing apparatus, substantially as described with reference to the drawings and/or examples.’ 

The apparatus in question was actually a form of ‘flat-nosed’ syringe which had been designed to dispense a liquid paracetamol medication to children.  It is worth quoting the primary claim in full, to demonstrate the rather specific nature of the combination of elements that was said to constitute the invention:

A liquid dispensing apparatus comprising a bottle, a bottle neck liner and a flat-nosed syringe having a plunger and a barrel, the barrel terminating at its distal end in a generally flat face having a diameter corresponding to the diameter of the syringe barrel and being perpendicular to the longitudinal axis of the barrel, the bottle having a bottle neck in which is located the bottle neck liner having a cylindrical body sealingly engaged inside the bottle neck such that liquid cannot flow between the bottle neck liner and the bottle neck, the bottle neck liner comprising a sleeve comprising at its lower end an inward step located within the bottle neck, an aperture being defined inwardly of the inward step, wherein the cylindrical body and the sleeve are connected together with a web of material only at the upper end of the cylindrical body and of the sleeve, wherein the sleeve is formed with a flared portion at its upper end into which the distal end of the syringe barrel passes; wherein when the syringe barrel is inserted into the sleeve the inward step prevents the syringe barrel from protruding past the step and liquid cannot flow between the sleeve and the barrel, but can leave the bottle only via the aperture and thence the syringe.

In the original trial before a single judge of the Federal Court (Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No 5) [2015] FCA 486), one GSK product was found to infringe the omnibus claim, but not the other claims in the patent.  That is, even though the judge concluded that the GSK product did not incorporate all of the elements recited in the above lengthy claim, the omnibus claim was not limited by those elements but ‘extends to the substantial idea disclosed by the specification and shown in the drawings’ (at [112]).

On appeal, the Full Court disagreed, finding that the context of the specification as a whole has a limiting effect on omnibus claims:

In our opinion, contrary to the conclusion of the primary judge, the use of the word “substantially” in [the omnibus claim] in the expression “substantially as described with reference to the drawings and/or examples” 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. A flat-nosed syringe dimensioned as described in the consistory statement is one of the essential features of the invention. Thus, whatever work the word “substantially” is to perform in [the omnibus claim], it cannot transform a feature made essential by the description of the invention into one that is now inessential. Put another way, an embodiment that does not possess the essential features of the invention as described, cannot be one that is “substantially as described”. Thus, the word “substantially” in [the omnibus claim] does not do the work which the primary judge held that it did.

Conclusion – A Substantially Sensible Result

Personally, I have always thought that the preferable interpretation of an omnibus claim is one in which it is assumed to fall within the scope of its corresponding independent claim.  Viewed this way, it is a relatively narrow claim defining one or more embodiments of the invention in which all of the elements of the main claim are present, with each taking a specific form as disclosed in one or more drawings and/or relevant passages in the description.

There are, indeed, hazards inherent in interpreting an omnibus claim in any other way.  For example, an unconstrained interpretation may encompass combinations of elements that do not satisfy the promises made for the invention (i.e. lack utility), or that comprise a different invention, or that encompass some unexpected prior art (i.e. lack novelty or inventive step).  While Reckitt Benckiser would doubtless have been happy with the judge who found its omnibus claim infringed by a product that did not fall within any other claim, it would have been less pleased had the more expansive interpretation resulted in the claim being found invalid!

It is true that the handful of legal authorities relating to omnibus claims (mostly fairly old English court decisions) are not entirely consistent on how they should be interpreted.  It is also true that the Full Court has not entirely foreclosed the possibility that an omnibus claim might not fall wholly within the scope of the broadest corresponding independent claim in the patent, for example where there are additional ‘inconsistent’ consistory statements in a specification.

Overall, however, I consider that this decision provides greater certainty regarding the interpretation and scope of omnibus claims than was previously the case.  Considering that we still have to live with them for another couple of decades, that can only be a good thing!


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