A review of omnibus claims in South African Patent Law is warranted, in particular, in light of recent Australian case law dealing with omnibus claims (Reckitt Benckiser vs. GlaxoSmithKline {2015} FCA 486).

Omnibus claims may be defined as patent claims directed to the description, drawings and/or examples of a patent specification without expressly reciting any technical features of the product or process as claimed.  

It is customary to conclude the claims of a complete specification with one or more omnibus claim(s) in South Africa. In our local law, we distinguish between a wide omnibus claim and a narrow omnibus claim. Narrow omnibus claims are intentionally limited in scope, an example thereof being the following: “The vector as claimed in Claim 1, substantially as herein described and exemplified with reference to the accompanying figures.”

The author is of the opinion that narrow omnibus claims and, for that matter, any omnibus claim should only be construed as being limited to each and every novel feature, which could possibly be relied upon to distinguish the invention over prior art. In the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft, 1959 BP 24 TPD, it was this narrow omnibus claim which was held to be both valid and infringed.

In regards to wide omnibus claims; said claims are intentionally broad in scope, with an example thereof being the following: “The new vector, substantially as herein described and exemplified with reference to the accompanying figures.” The wide omnibus claim may provide for a “back door” during post-grant amendments to enable circumventing the constraints imposed on post-grant amendments in terms of Section 51(7) of our Patents Act No.57 of 1978. However, due to the intentionally broad scope of wide omnibus claims, these wide omnibus claims may be attacked during revocation proceedings in terms of vagueness and clarity issues.  

Turning to Reckitt Benckiser vs. GlaxoSmithKline {2015} FCA 486, wherein the case dealt with flat-nosed syringes used in dispensing medications and more particular, the decision handed down by the honourable judge was that a wide omnibus claim was infringed in the absence of infringement of Claim 1. In this case, the judge found that the substance of the patented invention was taken and therefore caught by the wide omnibus claim even though infringement of the main independent claim was avoided.

It is the author’s opinion that in terms of non-textual infringement, in particular the mandate of a judge to employ the use of a purposive approach to determine the essential integers of an invention should only occur within the ambit of the widest scope of the main independent claim, as shown in the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft, 1959 BP 24 TPD, wherein a narrow omnibus claim was held to be both valid and infringed.

In the Reckitt case and in contrast with the above Frank case, no exact embodiment of the infringed syringe could be found in the description and/or the drawing of the patented invention, yet the honourable judge still found infringement of the wide omnibus claim.
In summary, the author only encourages the use of narrow omnibus claims and opposes the use of wide omnibus claims for reasons as described herein above. In addition, the instant decision in the Reckitt case was appealed and the writer eagerly awaits the decision of the Australian Supreme Court of Appeal for more clarity in this regard.

Allan John Rabie

Attorney
Patent Department
Email ajr@kisch-ip.com
Tel +27 11 324 3000