The Fall of Omnibus Claims


Australia’s “Raising the Bar Act” is set to take effect 15 April 2013. One of the provisions of the new law is that omnibus claims will no longer be allowed for applications in which a request for examination is filed on or after 15 April 2013.

“What is an omnibus claim?” you might ask. Well it is not a claim to one of these!

An omnibus claim is a claim which refers to the description and/or drawings as the subject matter of the claim. Omnibus claims are limiting in that the claim scope is restricted only to what the applicant actually disclosed. Yet there have been instances where the omnibus claim was the only claim left standing at the end of the day during validity challenges and sometimes the sole remaining claim upon which to base an infringement action.

World-wide use of omnibus claims is mixed. Currently, New Zealand, South Africa and the United Kingdom permit omnibus claims. The United States, South Korea, China, Israel and India do not permit omnibus claims. The use of omnibus claims in Canada and under the European Patent Convention is strictly limited. With the new law coming into effect, Australia will soon move from the group of jurisdictions permitting omnibus claims to the group of jurisdictions in which omnibus claims are disallowed.

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