It is required by patent law that the description of an invention must be clearly and fully disclosed, in order that the person who skilled in the art of said invention can understand and practice said invention. However, invention relates to the use of microorganism or biological material is normally difficult to be fully disclosed by a written description alone, and thus most countries have requested the applicant to make a deposit of microorganism or biological material which is generally not available to the public when filing an invention patent application involving the same. Nowadays, the applicant may deposit the microorganism in a recognized IDA (International Depositary Authorities) per the Budapest Treaty without the need to make repetition of deposit when filing multiple patent applications in different countries.
Per the Taiwan Patent Act, it is also stipulated that the applicant must make deposit of biological material when filing an invention patent application. If the invention is first filed in Taiwan, the deposit must be made in the local deposit institution the latest by the date when filing the invention patent application, or within 4 months (or 16 months from the earliest priority date) after filing the invention patent application in Taiwan, even if the biological material has already been deposited in the above mentioned IDA since Taiwan is not a signatory to Budapest Treaty. Therefore only if the applicant has deposited the biological material in an institution of a foreign country which has mutual recognition of deposit matter with Taiwan, then the applicant will be exempted from having to deposit the biological material in Taiwan.
As Japan is among the foreign countries which has a close trade relations with Taiwan, and also the top foreign applicant who mostly deposited the biological material when filing invention patent applications in Taiwan, both Taiwan and Japan had signed memorandum in November 2014 on the mutual recognition of deposit as mentioned above. Taiwan Intellectual Property Office recently announced the operational directions governing the mutual cooperation between TIPO and JPO on the deposit of biological material for the purposes of patent procedure to be effective as from June 18, 2015.
Accordingly if the applicant has deposited the biological material in Japan, he can then file a Taiwan patent application for his invention involving said biological material but without the need for deposit the same in Taiwan, and vice-versa. The deposit institutions of both Taiwan and Japan are listed as below:
Food Industry Research and Development Institute (FIRDI), Taiwan
National Institute of Technology and Evaluation, International Patent Organism Depositary (NITE-IPOD), Japan
National Institute of Technology and Evaluation, International Patent Microorganism Depositary (NPMD), Japan
It is to be noted that the biological material must be deposited prior to filing the patent application. Also, the deposit of biological material should be filed with the deposit institution under the deposit regulations at which said deposit institution is located. However, the request for furnishing the biological material must follow the deposit regulations of the territory which the invention patent application is filed.
Based on the above mutual recognition on the deposit of biological material between Taiwan and Japan, the applicant can now enjoy the benefits not to make repetition of deposits when filing the patent application in either side or both sides. However, the applicant must still submit the deposit certificate within 4 months (or 16 months from the earliest priority date as claimed) for Taiwan patent application if he already deposited the biological material in Japan, or at the same time when filing the Japan patent application if the deposit was made in Taiwan.
