The Effect of a Deposit Made in an International Depositary is not Recognized in Taiwan

As Taiwan is not a member country to the Budapest Treaty, the effect of a deposit made in an International Depositary under the Budapest Treaty is generally not recognized in Taiwan. Accordingly, even though a biological material has been deposited in an International Depositary in order to meet the enabling requirement, the applicant is still required to make a corresponding deposit in a domestic depositary designated by Taiwan Intellectual Property Office (TIPO).  A late deposit will be deemed as valid only if the certificates of deposit issued by both the international and domestic depositaries are filed before a statutory deadline, i.e. within four months from the filing date or sixteen months from the earliest priority date claimed, whichever is applicable.   Further, in the event that a deposit is deemed as invalid, the applicant may file a request for reinstatement of the deposit procedure within thirty days from the day following the cessation of the cause for delay.
For a patent application filed on December 29, 2015 in Taiwan claiming the priority date of February 29, 2014 from the counterpart U.S. application with a deposit of biological material, the applicant needed to make a corresponding deposit at the domestic depositary to fulfill the enabling requirement.  Accordingly, the applicant completed the necessary forms and submitted to the depositary the forms in which it was indicated that 6 vials of bacterial, i.e. the relevant biological material, are to be deposited in accordance with the “Rules for Depositing Biological Materials”. Upon a perusal, the depositary suggested that a total of 25, instead of 6 vials, of bacteria be deposited.   Thus, the applicant proceeded to make arrangement for the preparation of 19 additional vials of the bacteria on an urgent basis, but missed the four-month statutory deadline for filing with TIPO  the certificates of deposit issued by an international depositary and the domestic depositary. The applicant then filed a request for reinstatement of the deposit procedure; however, the request was not entertained by TIPO.  Against this unfavorable result, the applicant filed an appeal and, in turn, pursued the subsequent administrative litigation procedures.

The applicant argued that since it is time-consuming for the preparation of 19 additional vials of the bacteria to comply with the depositary’s suggestion, he took it for granted that he could wait until the certificate of the deposit of all the 25 vials of the bacteria was available to file both the international and domestic certificates in a lump.  The applicant also claimed that he had exercised all due diligence in complying with the depositary’s suggestion, and the occurrence of the delay is not an event controllable and attributable to him. 

On April 25, 2019, the Supreme Administrative Court issued a final Judgment upholding TIPO’s Decision that the deposit is invalid and cannot be reinstated as requested by the applicant. In its Judgment, the Supreme Administrative Court interpreted “factors not attributable to the applicant” in a strict manner, indicating that only an event substantially corresponding to “the will of god” or “war” can be considered as a factor not attributable to the applicant. On top of this, the Court held that the applicant should have at least deposited 6 vials of the bacteria in accordance with the “Rules for Depositing Biological Materials” and filed the international certificate of deposit timely.

This case suggests that an inadvertent negligence might result in an irreparable loss on the part of an applicant.  A patent practitioner should do his utmost to ensure that a patent application takes every required step toward becoming a patent and give sound advice to his clients when a patent practice in Taiwan is not in harmony with an international practice.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.