What are the consequences of not making a required biological material deposit for a patent application?

Failing to make a required biological material deposit for a patent application can have serious consequences:

  • Rejection of the application for lack of enablement under 35 U.S.C. 112
  • Inability to overcome rejections based on prior art
  • Potential invalidation of an issued patent

MPEP 2404 emphasizes the importance of deposits: “Where an invention depends on the use of a biological material, and words alone cannot sufficiently describe how to make and use the invention in a reproducible manner, access to the biological material may be necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112.”

If a deposit is required but not made, the applicant may not be able to demonstrate that the invention is fully enabled, potentially leading to a denial of the patent or vulnerability to future challenges.

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Topics: MPEP 2400 - Biotechnology, MPEP 2404 - Need Or Opportunity To Make A Deposit, Patent Law, Patent Procedure
Tags: Biological Material Deposit, enablement requirement, Patent Application Consequences