Changes to New Zealand Micro-organism Deposit Requirements
The New Zealand Patents Act 2013 came into force on 13 September 2014, raising the patentability and specification requirements for all complete applications (including PCT national phase applications) filed on or after 13 September 2014. The new Act also introduces a number of changes to New Zealand practice and case management, including changes to the filing of micro-organism deposit receipts.
Due to a quirk in the language of the New Zealand Patent Regulations 2014, a New Zealand application may be void insofar as the claimed invention is, or relies upon, a micro-organism deposited under the Budapest Treaty more than 3 months prior to the application being filed in New Zealand.
New microorganism deposit requirements under the new Act
The micro-organism deposit requirements must be satisfied where:
(i) the invention is a micro-organism; or
(ii) the invention involves the use, modification, or cultivation of a micro-organism, and a person skilled in the relevant art in New Zealand could not reasonably be expected to perform the invention without having a sample of the micro-organism, and the micro-organism is not reasonably available to a person skilled in the relevant art in New Zealand.
The micro-organism deposit requirements are satisfied if, and only if:
a) the micro-organism was been deposited on or before the filing date of the application;
b) a deposit receipt is filed at the New Zealand Patent Office within 3 months of the date the deposit was made;
c) the name of the depository institution and the file, accession or registration number of the micro-organism deposit given by that depository institution are included in the specification within 3 months of the date the deposit was made; and
d) at all times since the filing of the application, the deposits have been obtainable from the depository institution.
Failure to comply with the micro-organism deposit requirements means that the application will be considered void.
Amendment to the new Regulations required
In most circumstances, and in particular, for national phase entry applications, patent applicants could not reasonably be expected to satisfy deposit requirement (b) and (c), as a micro-organism deposit is likely to have been made and a deposit receipt issued several months or years in advance of filing the New Zealand application. We understand the New Zealand Patent Office is aware of this and that the wording of the Regulations will be amended in the near future to resolve this issue.
Interim extension of time available to satisfy requirements
Until the Regulations are amended, the New Zealand Patent Office has indicated that, in circumstances where a deposit receipt was not, or could not have been, filed at the New Zealand Patent Office within 3 months of the date on which the deposit was made, applicants will need to request an extension of time in order to satisfy deposit requirements (b) and (c). The extension of time request should be filed at the time of entering national phase in New Zealand or as soon as reasonably possibly thereafter. The grant of an extension is discretionary and only where exceptional circumstances exist. However, we understand that the New Zealand Patent Office will grant an extension where the deposit receipt could not have been filed within 3 months of the date of the deposit.
Recommendations for patent applicants in New Zealand
For new patent applications in New Zealand where the claimed invention is, or relies upon, a micro-organism deposited under the Budapest Treaty, applicants will need to ensure that they lodge a copy of the deposit receipt(s) at the time of filing or as soon as possible thereafter, accompanied by an extension of time request. Applicants should also ensure their specification includes, at the time of filing, the name of the depository institution and the file, accession or registration number of the deposit(s) in question.
If you have any queries or concerns regarding the new microorganism deposit requirements in New Zealand, please contact:
Alex Tzanidis and Bill Pickering