Omnibus claims are added to patents in some
jurisdictions as a catch all warning to potential infringers. They
generally take the form of "the product/method substantially
as described with reference to the drawings and/or
In the recent case of Reckitt Benckiser Healthcare (UK) Ltd
v GlaxoSmithKline Australia Pty Ltd (No 5)  FCA 486, the
trial judge found for the defendant, that all the claims were not
infringed, except one, being the omnibus claim.
The case dealt with flat-nosed syringes used in dispensing
medications from bottles. GlaxoSmithKline had proposed an
alternative design that skilfully avoided the language limitations
of all of the patentee's main claims. The judge carefully
examined the authorities on omnibus claims, which pointed to such
claims being a catch all, which appeared to be aligned with a
doctrine of equivalents argument familiar to those practising in
the United States. The judge found that the defendant had taken the
substance of the invention and was therefore caught by the omnibus
The Australian Patent Office attempted to limit the use of
omnibus claims by legislative amendments in 2013, and so it may be
difficult to continue to insert omnibus claims in new applications
examined after this date. The limitations were introduced in an
attempt to align Australian laws with those of other jurisdictions.
However, complex legal arguments, as a result of the Reckitt
Benckiser case, may allow a limited continued life in
Australian applications, especially after this case arguably shows
that they are "absolutely necessary". The consequences of
their inclusion, as illustrated by the above case, are likely to be
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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