Newsletter
“Operational Directions Governing Mutual Cooperation between TIPO and KIPO in the Field of Deposit of Biological Materials for Purposes of Patent Procedure” Took Effect September 1, 2020
In order to reduce the burden on patent applicants of repeated deposits of biological materials related to their inventions, the Ministry of Economic Affairs promulgated and implemented the“Operational Directions Governing Mutual Cooperation between TIPO and KIPO in the Field of Deposit of Biological Materials for Purposes of Patent Procedure” on September 1, 2020.
Since it is not a signatory to the Budapest Treaty, Taiwan stipulates in Article 27 of its Patent Act that when filing a patent application for invention involving a biological material or utilization of a biological material, the applicant shall, no later than the filing date, make a deposit of the biological material with the TIPO-designated domestic depository designated: Taiwan’s Food Industry Research and Development Institute (FIRDI). The applicant is only exempted from the requirement under any of the following circumstances:
1. Prior to the filing of the patent application for invention, the biological material concerned has been deposited in a foreign depository recognized by the TIPO, and the respective certificates of deposit and viability issued by FIRDI and the foreign depository are provided within the statutory time period.
2. The biological material involved can be easily obtained by a person of ordinary skilled in the art.
According to the “Operational Directions Governing Mutual Cooperation between TIPO and KIPO in the Field of Deposit of Biological Materials for Purposes of Patent Procedure,” both the TIPO and KIPO recognize deposits at each other’s designated depository. Hence, for any applicant filing patent applications with the TIPO and making a deposit of biological material with the depository designated by the KIPO, or filing patent applications with the KIPO and making a deposit of biological material with the depository designated by the TIPO, repeated deposits are not needed in the country where the patent application is filed based on the reciprocal recognition of deposit effect between the TIPO and KIPO for the purposes of patent procedure.
At present, the depository designated by the TIPO is the Food Industry Research and Development Institute (FIRDI), while those designated by the KIPO are the Korean Collection for Type Cultures (KCTC), the Korean Culture Center of Microorganisms (KCCM), the Korean Cell Line Research Foundation (KCLRF) and the Korean Agricultural Culture Collection (KACC).
Although said operational directions recognize the effect concerning the deposit of biological materials for the purposes of patent procedure between the TIPO and KIPO, for parties who may request furnishing of the deposited biological materials and grounds for such request, the local regulations of the country where the patent is filed shall apply.
Following the launch of the cooperative program on mutual recognition of the deposit of biological materials for the purpose of patent procedure between Taiwan and Japan in 2015 and between Taiwan and the UK in 2017, the cooperative program between Taiwan and South Korea once again expands the international range of cooperation on patent deposit cooperation with Taiwan. Domestic manufacturers or research institutes with multi-country patent application requests may choose the country of deposit based on the convenience of importing biomaterials and deposit procedures in the UK, Japan or South Korea, thereby also reducing the risk of contamination and inactivation of biomaterials during processing and transportation.