Intellectual Property Law

USPTO proposes rules requiring deposit of biological material before publication of application

By McKee, Voorhees & Sease, P.L.C.

In today's Federal Register, the USPTO proposes rules that will alter when a deposit of biological material is required to be made when such a deposit is used to satisfy the requirements of 35 U.S.C. § 112.  Specifically, the proposed rule will require that a deposit, if necessary, be made before the application is published.

Under current practice, 37 C.F.R. § 1.804 provides that a deposit, if necessary, may be made "at any time before filing the application for patent or, subject to § 1.809, during pendency of the application for patent."  As a result, currently applicants do not have to go to the expense of making a deposit unless and until the patent is allowed.

The revised practice would require not only that a deposit be made "before technical preparations for publication of the application as a patent application publication have begun," but also that:

Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the earlier of publication of the application under § 1.211 and 35 U.S.C. 122(b) or grant of the patent, and any deposit referenced in a patent application publication or patent will be available to the public upon publication or patenting, regardless of whether the deposit was necessary for compliance with any statutory provision.

This places applicants in a potential Catch-22:  in order to get the patent, a deposit may be required, however, if a patent is not eventually granted on the application, the biological material essentially becomes free to anyone to use.  This situation is currently avoidable by not making the deposit until the application was allowed.

Read the full Federal Register notice here. 

Full post as published by FileWrapper on February 20, 2008 (boomark / email).