Due date for making a micro-organism deposit under Australia's new patent law

Date: 2013-05-24
Author: Sarah Hennebry

Recent changes to Australian patent law provide that the due date for filing a Budapest Treaty deposit is on or before the date of filing of a priority application.

By now, most will know that new law came into force on April 15, 2013 having application to patent applications for which examination is requested on or after this date. Pre April 15, 2013 old law continues to apply to applications for which examination had been requested prior to this date.

Under the old law an Australian complete application (i.e. an Australian National phase or Convention application) relating to a micro-organism is deemed to have satisfied the disclosure requirements for written description if a sample of the micro-organism has been deposited at a prescribed depositary institution on or before the PCT or Convention filing date. However, it remains unclear under the old law whether an applicant is entitled to claim priority from a priority application in circumstances where the deposit date is after the filing date of the priority application.

While the ambiguity remains in respect of patents and applications to which the old law is applicable, the new law clarifies the position in respect of patent applications for which examination was requested on or after April 15, 2013. Specifically, in order to claim priority from a priority application, the micro-organism must have been deposited with the relevant depository authority on or before the filing date of the priority application.

Further, the following requirements under the new law must also now be met in respect of the specification of the priority application:

  • the specification must include relevant information about the micro-organism as was known to the applicant at the filing date of the application; and
  • the specification must disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, other than in relation to the description of the micro-organism.

It is expected that the Patent Office will not grant an extension of time to a patent applicant to enable the applicant to extend the time period for making the deposit to after the priority application filing date.

Finally, the new law has not brought any change to the law relevant to the disclosure requirements in respect of an Australian complete application for an invention relevant to a micro-organism. For example, it will continue to be the case for applications to which the new law applies that at all times since the publication of the application, the specification of the complete application has included:

  • the name of the relevant depositary authority;
  • the accession number relevant to the deposit given by the authority.

For more information on protection of inventions that relate to micro-organisms, see Australia - From Filing to Grant