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Time of Making a Deposit When File a Chinese Application
Wenhan LIU
Patent Attorney
Chemistry & Biotechnology Department
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The topic for today is the guidelines for setting up a proper time to make a microbial deposit when an applicant decides to apply in China, especially the applicant from the United States. Because of the differences of the regulations between the USPTO and CNIPA, the applicant may face problems, sometimes irretrievable, which will make the application rejected by the examiner in China.
According to the MPEP provided by the USPTO, where a deposit is needed, it must be made no later than the time period set by the examiner at the time the Notice of Allowance and Issue Fee Due is mailed. Even, a necessary deposit need not be made by an applicant until the application is in condition for allowance so long as the applicant provides a written assurance that an acceptable deposit will be made on or before the payment of the issue fee.
However, this would be too late to make an acceptable deposit if the applicant wants to apply counterpart patents in China. It is requested to make a deposit at least on the date of filing the formal application with no priority claimed, or at least on the date of filing when the priority is claimed (i.e. the date when a provisional application is filed).
To be specific, according to the Guidelines of the Patent Examination in China, the applicant has to:
(i) deposit a sample of the biological material with a depositary institution designated by the CNIPA (i.e. the institution acknowledged by the Budapest Treaty) before the date of filing, or, at the latest, on the date of filing (or the priority date when the priority is claimed), and
(ii) submit, within four months from the date of filing, a certificate of deposit and a certificate of viability of the biological material issued by the depositary institution.
No matter which one of the above-mentioned requirements is not complied with, it may cause the biomaterials in the patent application to be regarded as “Not to Have Been Deposited”. If so, it may cause the patent application to be deemed as "insufficient disclosure of the specification" in the process of the substantive examination, which may lead to a high risk of final rejection, or at least an abandonment of priority.
Therefore, it is suggested that the applicant should at least start the relevant procedures for the preservation of biomaterials at the time of preparing for the patent application to the institution for deposit recognized by the CNIPA, and obtain the preservation and survival certificate issued by the institution, so as to ensure that the documents prepared are comprehensive and sufficient before the application date.
That's all for my topic. Feel free to contact us if you have any further questions. As a leading patent law firm in China, we are always glad to help. See you next time!
