PCT Rule 13bis — Inventions Relating to Biological Material (MPEP Coverage Index) – BlueIron IP
PCT Rule 13bis Inventions Relating to Biological Material
This page consolidates MPEP guidance interpreting PCT Rule 13bis, including 6 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section addresses the handling of deposits for inventions involving biological material in PCT filings, allowing designated offices to disregard deposits made with non-notified institutions.
What this section covers
- Defines that this section addresses the handling of deposits for inventions involving biological material in PCT filings.
Key obligations
- States that designated offices may disregard deposits made with institutions not notified by them under Rule 13bis.7(b).
- Notes that this section does not require the deposit to be made with a notified institution, but allows designated offices to disregard such deposits.
Practice notes
- Advise practitioners to ensure deposits are made with notified institutions to avoid disregarding the deposit by designated offices.
- Warn against making deposits with non-notified institutions to prevent potential rejection or disregard by designated offices.
Official MPEP § 13bis — Inventions Relating to Biological Material
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 13 bis Inventions Relating to Biological Material
13 bis.1 Definition
For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary institution or to the biological material so deposited.
13 bis.2 References (General)
Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.
13 bis.3 References: Contents; Failure to Include Reference or Indication
- (a) A reference to deposited biological material shall
indicate:
- (i) the name and the address of the depositary institution with which the deposit was made;
- (ii) the date of deposit of the biological material with that institution;
- (iii) the accession number given to the deposit by that institution; and
- (iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7(a)(i) , provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.
- (b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.
13 bis.4 References: Time Limit for Furnishing Indications
- (a) Subject to paragraphs (b) and (c), if any of the
indications referred to in
Rule
13bis.3(a)
is not included in a
reference to deposited biological material in the international application
as filed but is furnished to the International Bureau:
- (i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
- (ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
- (b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13bis.3(a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13bis.7(a)(ii) and has published such requirement in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.
- (c) Where the applicant makes a request for early publication under Article 21(2)(b) , any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.
- (d) The International Bureau shall notify the applicant of the
date on which it received any indication furnished under paragraph (a),
and:
- (i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
- (ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.
13 bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions Other than Those Notified
- (a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
- (b) References to different deposits of the biological material may be made for different designated States.
- (c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7(b) .
13 bis.6 Furnishing of Samples
Pursuant to Articles 23 and 40 , no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.
13 bis.7 National Requirements: Notification and Publication
- (a) Any national Office may notify the International Bureau of
any requirement of the national law:
- (i) that any matter specified in the notification, in addition to those referred to in Rule 13bis.3(a)(i) , (ii) and (iii) , is required to be included in a reference to deposited biological material in a national application;
- (ii) that one or more of the indications referred to in Rule 13bis.3(a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months from the priority date.
- (b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
- (c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).
| MPEP Section | Rules |
|---|---|
| MPEP § 1823.01 | |
| MPEP § 2402 |