Wednesday, 13 February 2013

No reason to refuse amendment that makes no changes

Omnibus claims had a rare moment of glory in the British courts last week.  By way of background, according to Wikipedia (but shorn of references):
"A so-called omnibus claim is a claim including a reference to the description or the drawings without stating explicitly any technical features of the product or process claimed. For instance, they may read as "Apparatus as described in the description" or "An x as shown in Figure y". 
Omnibus claims are allowed under the EPC, but only "when they are absolutely necessary". Other patent offices, such as the United Kingdom Patent Office, are more receptive to this claim style".
The status of the omnibus claim was reviewed in Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4decided in the Patents County Court for England and Wales by Judge Colin Birss QC on 5 February 2013.  Such claims, it seems, do neither harm nor good: they don't seem to serve any useful purpose at all:
"A point arises on new claim 2 because it is an omnibus claim and ERT contends an amendment leaving it in place should not be permitted. ...

New claim 2 (which was claim 13 as granted) is a so called "omnibus" claim. These were formerly quite common. They can be difficult to interpret. Are they very narrow, very broad or somewhere in between? 40 years ago a patentee found the last valid claim standing was the omnibus claim (Surface Silos v Beal [1960] RPC 154). However both the current edition of Terrell (17th Ed, 2011, paragraph 9-123) and its predecessor (16th Ed, 2006, paragraph 6-128) state that the circumstances in Surface Silos are unlikely to recur in the modern practice and so "it is therefore an unprofitable exercise to attempt to reconcile the many decisions, now of considerable antiquity, as to the scope of such claims, but previous editions of this work have gathered the principal references" [referring to the 15th Ed (2000)].

The EPO ordinarily does not grant such claims as a result of their difficulty in interpretation (T 150/82 IFF / Claim Categories (1984)). It may be noted this decision was in 1984. Such claims are only to be allowed in exceptional circumstances and the EPO places the onus on showing such exceptional circumstances on the patentee. In practice this means these claims have effectively been abolished in the EPO. However the UK IPO still grants such claims.

The claimant submits that given that EPO practice is now to be followed in amendment applications as a result of s75(5) of the 1977 Act and, since the patentee has not established or tried to establish any exceptional circumstances, the amendment should be refused as a matter of discretion.

I do not agree that this amendment can be refused on discretionary grounds. The reason is because this claim is not being amended at all. To renumber it does not count. For what it is worth I think the EPO, despite their antipathy to these omnibus claims, would take the same view. The patent has been granted with that claim in it. If the claim is invalid it should be revoked, but there is no reason to refuse an amendment which makes no change to it.

I will allow the amendment.

If I may say so, the UK IPO might like to consider whether omnibus claims serve any useful purpose today save in exceptional circumstances. I question whether they can really be said to satisfy the requirement of clarity (s14 of the 1977 Act) which is applicable pre-grant but is not a ground for post-grant revocation".
In these circumstances it might be worth asking whether, and if so to what effect, it is worth troubling the court with them.

1 comment:

Suleman said...

I think UK practitioners are very attached to omnibus claims, especially after Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 where the court construed the omnibus claim to cover variants not covered by claim 1. In the UK they are potentially very useful because unlike most other territories they do not have to be dependent on a previous non-omnibus claim. Until they are 'outlawed' here I think there are advantages in having them in one's patent.