ホーム > English > Q78. Deposit of Microorganism or Biotech Material

Q78. Deposit of Microorganism or Biotech Material

Q78. Deposit of Microorganism or Biotech Material
 Assume the deposit has been made (e.g., plasmid, etc.) in the U.S. with ATCC prior to the U.S. filing date of the U.S. application. The Japanese law requires deposit prior to the filing of the priority application. The U.S. law allows deposit after filing of the application. The Accession Number from the ATCC was not made available until after the U.S. filling of the U.S. case. The Accession Number is therefore not disclosed in the U.S. application as originally filed. Can the Accession Number be added to the Japanese application?

A78. No. The priority cannot be enjoyed for the Japanese application, if the invention is related to the microorganisms which were not easily available at the filing date of the U.S. application. In addition, the Accession Number from the ATCC (or any other International Depository Authority under Budapest Treaty, or a storage number when the deposit was made to a reliable public storage authority) cannot be added to the Japanese application even at the filing date of a Japanese application, even if it is desired to retain the convention priority right. Under the current practice, the Accession Number should be described in the basic application to enjoy the convention priority.
 In this connection, the Examination Guidelines regarding microorganism explain a case of exceptionally acceptable supplement as follows:
 “An amendment of an accession number of a microorganism is not regarded as addition of new matter, if microbiological characteristics of the microorganism are described in the specification as filed, to the extent that the microorganism can be identified, and deposit of the microorganism can be identified based on the name of the depositary institution, etc. In such a case, the applicant should make an amendment of the accession number without delay.” (Part VII: Chapter 2 Biological Inventions, 2.3) If the accession number were added to the basic U.S. application after the filing thereof under the condition stated above, then it may be possible to enjoy the Convention priority based on the basic U.S. application for the corresponding Japanese application.