26 March 2017

The end of omnibus claims in the UK

Omnibus claims are claims that define the scope of the invention by referring generally to the description or drawings included in the patent application, rather than by reciting specific technical features. For example:

“A method substantially as herein described” or “A product as shown in any one of Figures 1 to 3.”

The scope of such claims can be very unclear, causing third parties great uncertainty as to what constitutes an infringement of such claims.  It is possible to argue that they cover a specific embodiment of the invention and are therefore very narrow in scope.  On the other hand, it could also be argued that such claims protect any subject matter disclosed in the description, including that not covered by the other claims of the patent. 

Omnibus claims are not permitted in many territories and do not meet the requirements of the European Patent Convention (EPC) or of the International Patent Cooperation Treaty (PCT).  However, they have historically been allowed in the United Kingdom, but this is now set to change.

From 6 April 2017, omnibus claims will only be permitted in a UK patent application if the technical features of the invention cannot otherwise be clearly and concisely defined.  Specifically, the amended rule states:

“The claim or claims must not rely in respect of the technical features of the invention on references to the description or any drawing or photograph unless the feature cannot otherwise be clearly defined in words, by a mathematical or chemical formula or by any other written means.”

As a result, examiners of the UK Intellectual Property Office (UKIPO) will object to omnibus claims in pending applications.  It will also no longer be possible to amend a granted patent to add an omnibus claim.  However the presence of an omnibus claim in a granted patent will not be a ground for revocation and any granted patents including such claims will remain valid.