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RIP the omnibus claim

The UKIPO have issued a statement that use of omnibus claims will no longer be allowed from 6th April 2017.  Omnibus claims are commonly used in GB applications and are claims that refer generally to the description and/or drawings. The downside of the omnibus claim is that they are generally of fairly narrow scope which is based upon the specific embodiment mentioned in the description.  As a result the scope of protection of the omnibus claim can be arguable and sometimes unclear.   The omnibus claim is not allowed in many countries, including the European Patent Office (EPO).  Therefore, this change in GB law will offer some consistency between direct GB filings and GB validated European applications.

It will be a shame, however, for applicants to lose the omnibus claim. They are of particular use post grant, for example when a third party has directly copied a patented invention and when the other claims of the patent have been invalidated. The omnibus claim offers a much needed fall-back position for the patentee and can allow for the patentee to successfully enforce their rights against the infringing third party even when the claims of broader scope have been knocked out.

The omnibus claim is also highly desirable from a patent box perspective but only when a broader scope of protection is not required for patent enforcement purposes or when a quick grant of the application is desirable.  This is because in such cases the narrow scope of the omnibus claim is enough to enable the patentee to qualify for patent box, whereby the corporation tax on the profits attributed to the patented invention is reduced to the lower rate of tax.

The above benefits of the omnibus claim can sadly no longer be relied upon as of the 6th April 2017 when Examiners will commence raising an objection to the presence of omnibus claims in GB applications.  Granted patents which contain omnibus claims will be unaffected by this change in the law i.e. the omnibus claims of granted patents will be considered valid in post grant proceedings.

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