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SOUTH AFRICAN PATENTS LONG MEMORANDUM ON OMNIBUS CLAIMS

An Information Pamphlet

BBEE Status: We have received our Level 2 Accreditation for 2013

Hahn & Hahn voted IP Boutique Law Firm of the Year in South Africa 2013
Janusz Luterek has been voted one of the worlds top1000 IP attorneys

We have adopted the practice of ensuring that patent applications which we file in South Africa, include both relatively narrow and relatively broad omnibus claims.  This may entail adding to a patent application before filing thereof, narrow or broad omnibus claims, or both.  In those cases where the patent applications we receive already include narrow omnibus claims, our practice is to retain these narrow claims and add one or more broad omnibus claim(s).  Where the applications we receive already include a broad omnibus claim, we retain this broad claim and add one or more narrow omnibus claims.

The narrow omnibus claims are intentionally limited in scope, and examples thereof are the following:

            An article as claimed in Claim 1, substantially as herein described and illustrated.

            A method/process as claimed in Claim 10, substantially as herein described and illustrated.

            A compound as claimed in Claim 1, substantially as herein described and illustrated.

            Use of a compound in the manufacture of a medicament substantially as herein described and illustrated.

            A substance or composition for use in a method of treatment as claimed in Claim 1, substantially as herein described and illustrated.

These narrow omnibus claims should, in our opinion, be construed as being limited to each and every feature which could possibly be relied upon to distinguish the invention over prior art.  They are intended as a last ditch attempt to obtain a valid claim which will be infringed by a competitor's exploiting the preferred version(s) of the invention, as described and illustrated with reference to the Example(s) and/or drawing(s).  In the worst situation this narrow omnibus claim could end up as the only valid claim after a successful  attack  on  the  validity of the other claims in a patent, e.g. in defence of an infringement action by the patentee.  Indeed, in the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft, 1959 BP 24 TPD, it was the narrow omnibus claim in the patent in question, which was held to be both valid and infringed.

Examples of broad omnibus claims which we include, are the following:

            A new article, substantially as herein described.

            A new building method, substantially as herein described.

            A new compound, substantially as herein described.

            A new use of a compound, substantially as herein described.

A substance or composition for a new use in a method of treatment, substantially as herein described.

            A new process for preparing a compound, substantially as herein described.

Where a patent application includes several independent conventional (i.e. non-omnibus) claims which cover several different aspects of the invention, we may draft a single broad omnibus claim such as the following:

            A new article, building method, or building system, substantially as herein described.

            A new compound, pharmaceutical composition, preparation process, or use in the manufacture of a medicament, substantially as herein described.

As you can see, these encompass anything which is "substantially" described anywhere in the specification, and are limited only by the term "new".  "New"  in  relation  to  an  invention  is  defined in our Patents Act.  The use of the term "new" in an omnibus claim for an invention is intended to exclude, inter alia, any prior art which may be described in the patent application for the invention, and so provides a claim which is very broad in scope but not anticipated by the prior art.

The advantage of broad omnibus claims:  The specification and claims both of a pending application and of a granted patent, can be amended provided that (a) no new matter is thereby introduced, and (b) each of the claims, after amendment, is fairly based on matter included in the specification before amendment.  Furthermore, for a granted patent, (c) each of the claims, after amendment, must fall wholly within the scope of a claim included in the specification before amendment.  As you will appreciate, a broad omnibus claim can often be relied upon to satisfy proviso (c) above, ie to provide a way of obtaining, in the granted patent, a new claim for an article, method, compound, etc,which does not fall wholly within the scope of any of the other claims, provided that such new claim also satisfies provisos (a) and (b) above.

The broad omnibus claims may arguably be more open to attack than a narrow omnibus claim, and hence the presence  thereof  may  render  the  patent  subject to revocation on the ground that the patent includes one or more claim(s) which is/are not clear.  Nevertheless, the invalidity of any claim, including a broad omnibus claim, does not, in our opinion, necessarily prevent it from being used, after grant of a patent, as a vehicle to introduce a valid claim which is outside the scope of any of the other claims in the patent.

Litigation: If litigation is ever contemplated for a patent, for example initiation of an infringement action (to which the alleged infringer can respond with a counterclaim of invalidity and an application for revocation), we always recommend that the specification and claims be reviewed critically, before any litigation proceedings are instituted, and that any perceived weaknesses in the claims be made good.  For example any limitations necessitated by prior art revealed in other countries should be overcome by amendment first.  Then, if the client/patentee is satisfied with the scope of the other (i.e. non-omnibus) claims, and does not need to rely any longer on any broad omnibus claim to make an amendment outside the ambit of protection afforded by the other claims, the broad omnibus claim or claims can readily be deleted.  If the client/patentee is not satisfied with the scope of the remaining claims, the broad omnibus claim or claims can be deleted, after the necessary amendment has been made.