Introduction Intellectual Property is a way of protecting technologically invented rights. Various forms of creation…
Omnibus is a Latin word meaning ‘For all, for everyone’. The dictionary defines omnibus as ‘A printed anthology of the works of one author or of writings on related subjects’. The key discussion in this article will be pertaining to omnibus claims as relevant to a Patent application, their significance, scope, and current status of allowance of omnibus claims with respect to different geographical regions.
Patent claims are the most integral part of a patent application, precisely claiming the aspects of the process/ product/ technology that the inventor claims to be novel. These precise claims are described in the detailed description in terms of their functionality, advantages, and novelty as compared to the prior art based on the Patent subject under discussion. Claims provide the basis for the extent of protection conferred in a patent application and are therefore the most important part of the application forming the basis for examination/patent prosecution and litigation proceedings. The two basic types of claims are independent claims and dependent claims. Claims further can be defined as Jepson’s claim, Markush claim, Means-plus-function claim, Product-by-process claim, Swiss-type claim, and an Omnibus claim based on the structure.
An omnibus claim is a claim which refers to the description and/or drawings as the subject matter of the claim. Omnibus claims limit the claim scope to only what the applicant actually disclosed. Despite this, however, there have been cases where the omnibus claim was the only claim left at the end of validity challenges and sometimes the sole remaining claim upon which to base an infringement action. Therefore for patent applications that are not very strong, omnibus claims can play an integral role to serve the purpose of filing the patent application and forms the sole basis of protection of claimed novelty. A key difference between omnibus claims and independent/dependent claims is that while non-omnibus claims draw boundaries of what is being claimed as the novelty and dependent features of novelty, omnibus claims expand those boundaries to include the parts of the invention mentioned in the specification and drawings but not expressly mentioned in the claims. This is why an omnibus claim is usually added as the last claim in order to include the drawings and description within the scope of the claims and ensuring that no aspect of the invention has been missed out. Hence, the inclusion of omnibus claims is recommended in jurisdictions where applicable, for the sake of protecting whatever is disclosed in the drawings and specification apart from the claim.
Omnibus claims can be narrowly or broadly drafted based on the patent application and scope of coverage, and can also include both narrow and broad omnibus claims. The narrow omnibus claims are intentionally limited in scope, and examples thereof are the following:
An article as claimed in Claim 1, substantially as herein described and illustrated.
A method/process as claimed in claim 10, substantially as herein described and illustrated.
A compound as claimed in claim 1, substantially as herein described and illustrated.
Use of a compound in the manufacture of a medicament substantially as herein described and illustrated.
A substance or composition for use in a method of treatment as claimed in Claim 1, substantially as herein described and illustrated.
These narrow omnibus claims should be construed as being limited to each and every feature which could possibly be relied upon to distinguish the invention over the prior art. They are intended as a last-ditch attempt to obtain a valid claim which will be infringed by a competitor exploiting the preferred version or versions of the invention, as described and illustrated with reference to the Examples and/or drawings. In the worst situation, a narrow omnibus claim could end up as the only valid claim after a successful attack on the validity of the other claims in a patent, e.g. in defense of an infringement action by the patentee. Indeed, in the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft, 1959 BP 24 TPD, it was the narrow omnibus claim in the patent in question, which was held to be both valid and infringed.
Few examples of broad omnibus claims are the following:
A new article, substantially as herein described.
A new building method, substantially as herein described.
A new compound, substantially as herein described.
New use of a compound, substantially as herein described.
A substance or composition for a new use in a method of treatment, substantially as herein described.
A new process for preparing a compound, substantially as herein described.
Where a patent application includes several independent conventional (i.e. non-omnibus) claims which cover several different aspects of the invention, a single broad omnibus claim such as the following may be drafted:
A new article, building method, or building system, substantially as herein described.
A new compound, pharmaceutical composition, preparation process, or use in the manufacture of a medicament, substantially as herein described.
Considering the above we can conclude that the use of omnibus claims can be a huge advantage and a very useful tool while drafting a patent application in order to provide maximum protection. However omnibus claims can also be misused to claim more than truly intended novelty as prescribed by the inventor. For this very reason, the worldwide use of omnibus claims is mixed. Currently, New Zealand, South Africa, and the United Kingdom permit omnibus claims. The United States, South Korea, China, Israel, Australia, and India do not permit omnibus claims. The use of omnibus claims in Canada and under the European Patent Convention is strictly limited.
About the Author: Mr. Ankur Sehgal, Patent Associate at Khurana and Khurana, Advocates and IP Attorneys and can be reached at [email protected]