UK: use of omnibus claims is limited

As of April 6, 2017, the United Kingdom Intellectual Property Office does not allow inclusion of omnibus claims into patent applications.

Omnibus claims are claims which do not describe technical features of the invention themselves but rely on references to the description or the drawing(s) of the patent application. Difficulties with understanding of such claims may arise as they may not allow to clearly define the scope of protection. As a result, third parties may not understand if their activities can infringe said patent.

It is now possible to include an omnibus claim into an application only if a technical feature cannot otherwise be stated by written means. Patent examiners will object to omnibus claims included into pending patent applications unless the compliance period of the application ended before April 6, 2017. A compliance period expires after four years and six months after the filing/priority date or one year after the first examination report, whichever is later.

The option of amendment of a granted patent in order to insert an omnibus claim is no longer available as well. Still, granted patents with such claims remain valid and cannot be revoked on said ground.

For more information on patent registration in the UK please see our applicant’s guide. We also welcome you to visit IP-Coster quotation system to get actual quotes for IP rights registration in the countries of your interest.

Author: Lynda Miller