Routine omnibus – not routine anymore in the UK
Published on 16 Mar, 2017
From the 6 April 2017, the United Kingdom Intellectual Property Office (“UKIPO”) will only allow omnibus claims in United Kingdom (UK) patent applications and European patent application designating Great Britain (GB) in limited instances.[i] Furthermore, it will no longer be possible to amend a granted UK patent or a European patent designating GB to include one or more omnibus claims. However, it will not be a ground of revocation for a granted UK patent to have an omnibus claim.[ii]
The change has been adopted after stakeholder consultation and a UKIPO review of omnibus claim practice.[iii] Indeed this is one of several practice “improvements” being administered by the UKIPO after public consultation in 2016 regarding a set of proposed changes to the Patents Rules 2007 which set out the procedural and administrative requirements that apply to patents and patent applications in the UK. These changes are intended to simplify, clarify and bring greater certainty to users of the UK patent system.
An omnibus claim refers generally to the description and drawings included in a patent or patent application rather than explicitly stating the technical features of an invention. Omnibus claims have traditionally been included in a specification as a very narrow or limited final fallback position. However, by their very nature, it can be problematic to determine their precise scope. This uncertainty means that patentees and third parties cannot be sure of the scope of protection provided by the patent in question.
The change in UKIPO practice means that omnibus claims will only be allowed where there is no way of defining the invention in a clear and concise way by written means. Indeed, the proposed inclusion to rule 12 of the Patent Rules 2007 provides that:
“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.”
The UKIPO will raise an objection of non-compliance with the new provision during examination of any unacceptable omnibus claims in a patent application, unless the patent application has a compliance period expiring before 6 April 2017.[iv]
While the UKIPO report proposing the change makes it clear that omnibus claims are only to be allowed where they are “absolutely essential” to define the scope of the claim, the wording of the proposed inclusion arguably goes further.
This same “absolutely necessary” language is used in relation to omnibus claim practice in Rule 43(6) of the European Patent Convention, in Rule 6.2(a) of the Patent Cooperation Treaty, as well as subsection 40(3A) of the Australian Patents Act 1990 (Cth) (post Raising the Bar), which in particular provides that the claim(s) “must not rely on references to the description or drawings unless absolutely necessary to define the invention.” It is believed that the UK policy makers intentionally took this additional step by drafting this narrowing inclusion to rule 12 in such a way that any determination of the scope of an omnibus claim must be absolutely clear from the wording of the claim alone without the requirement for reference to any external matter. Their intent was to avoid potential clarity issues around the meaning of the phrase “absolutely necessary”, thereby avoiding time intensive arguments during examination as to what “absolutely necessary” means.
As a result of the consultation, the UKIPO has also clarified that it is not their intention to prevent the claims from referring to the description for reasons of conciseness and that they will consider how best to appropriately alter the proposed rule to avoid confusion.[v]
The practice change will apply to all new and pending applications for UK patents and to granted UK patents from 6 April 2017.
[i] Guidance: Changes to Patents Rules on 1 October 2016 and 6 April 2017, UKIPO, 1 September 2016, <https://www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017/changes-to-patents-rules-on-1-october-2016-and-6-april-2017>
[ii] Proposed Amendments to the Patents Rules: Government Response, UKIPO, 2016, <https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/541238/Proposed_changes_to_the_Patents_Rules_government_response.pdf>
[iii] Proposed changes to the Patents Rules, UKIPO, 29 February 2016, <https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/503493/Proposed_changes_to_the_Patents_Rules.pdf>
[iv] Rule 30 of the Patents Rules 2007 sets the “compliance period”, the last day of which is the “compliance date” which is typically 4.5 years from the priority/filing date or, if it occurs later, 1 year from the date of issue of the first examination report.
[v] above 2