Australia: Omnibus claims and the doctrine of equivalents

For many years, Australia has allowed omnibus claims, which take the form of "an apparatus substantially as hereinbefore described…". They have been utilised as a last line of defence for patentees when suing defendants.

Unfortunately, Australia does not have a strong doctrine of equivalence, found for example, in US jurisprudence. Hence, we have tended towards a literal infringement of claims.

Any hope that the omnibus claim would assist in finding non-literal infringement of patent applications has recently been dashed by our Full Federal Court in GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90.

The subject matter of the case dealt with a spill-free syringe dispensing system, which dominated the consumer market. The defendants had invented around the main claim and had developed an alternate syringe that the trial judge found had "exactly the same function". Unfortunately, for the patentee, the defendant's modifications meant that there was no literal infringement of the main claims.

The trial judge held that the omnibus claim could be utilised in a doctrine of equivalence sense to cover the "substance" of the invention. The Full Court overruled the trial judge, and, as a result, severely curtailed the operation of omnibus claims. The Court noted the overriding requirement for the omnibus claim to not extend beyond what was covered by the claims.

As a consequence, omnibus claims (which have recently also been curtailed by our Patents Act), are significantly reduced in effectiveness. Also, our courts appear to be moving towards a literal infringement position of patent claims which will be of great concern to patentees.

Peter Treloar

Shelston IPLevel 21, 60 Margaret StreetSydney NSW 2000, AustraliaTel: +61 2 9777 1111Fax: +61 2 9241 4666email@shelstonip.comwww.shelstonip.com