Omnibus claims are now effectively prohibited following the Raising the Bar amendments, however a great many patents including such claims have been granted. The Full Federal Court decision,GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90, provides some welcome guidance on how such claims should be construed.
At trial, it had been held that a particular product infringed an omnibus claim despite not infringing any other claim of the patent. A key aspect of that finding was the construction given to the term “substantially” in the claim. The appellant argued that this merely showed an intention that the claim should not be read too literally and could not broaden the claim to substitute something different for an essential feature of the described apparatus.
When an omnibus claim is in issue, the words of the claim typically place greater attention on the body of the specification to provide the necessary definition of the invention. In this case, the claim drew attention to the drawings and/or examples. The Full Court noted that:
- the example and accompanying drawings were provided to “better understand the various aspects of the invention”;
- the drawings were of the single preferred embodiment;
- the description of the drawings made it clear that the example given is that of the first aspect of the invention
Accordingly, the Full Court found that the example given did not represent, and should not be construed as, a departure from what the specification had previously described as the first aspect of the invention. Properly understood, the example fell within the confines of that description. The Court therefore concluded:
Given that the consistory statement for the first aspect of the invention finds expression in claim 1, and given that the specification makes clear that the example given is of the first aspect of the invention, it must follow that the invention defined in claim 9 cannot be wider in scope than the invention defined in claim 1.
Contrary to the conclusion of the primary judge, it was held that the use of the word “substantially” in the claim did not extend the definition of the invention to “the substantial idea” disclosed by the specification and shown in the drawings. The word “substantially” provided no warrant for departing from what the specification itself mandated to be the essential features of the invention. Ultimately, the Court found that:
Whatever work the word “substantially” is to perform … 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”.
Precise construction of the scope of omnibus claims is often challenging. While the wording of such claims can vary, this decision provides a degree of clarity about the extent to which such claims can be construed as excluding what are essential features of the invention.
