From Budapest to Wellington – Patents for microorganisms in New Zealand

Industrials Intellectual Property Patents & Trade Marks

In brief

New Zealand recently acceded to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (Budapest Treaty), which came into force in New Zealand on 17 March 2019. Managing Associate Tony Shaw discusses what this means for patent applicants.

Why does this matter?

In order to meet the support and enablement requirements for patentability, a patent must disclose an invention in enough detail that it can be performed by a skilled person. However, where the invention involves a microorganism, it is not always possible to describe the invention in a manner that provides enough information to allow a skilled person to reproduce the microorganism. In such cases, the Budapest Treaty provides a mechanism for an applicant to deposit a microorganism at any one of over 45 International Depositary Authorities (IDAs). Under the provisions of the Budapest Treaty, the depositor of a viable microorganism is issued with a deposit receipt. The receipt (and a translation, if required) is recognised by the Patent Offices of all Contracting States to the Treaty as a sufficient description of the microorganism. This avoids the need for applicants to deposit a sample of the microorganism in each jurisdiction where patent protection is sought.

When the current New Zealand Patents Act 2013 (the Act) and accompanying Regulations came into force, applicants were required to provide the Intellectual Property Office of New Zealand (IPONZ) with a copy of the deposit receipt for a microorganism within three months of making the deposit. This was too soon! Microorganism deposits are generally made around the time a PCT application is filed (or earlier), which is typically around 18 months before any thought is given to where national patent applications will be filed.

For a time, IPONZ provided a free extension of time in which to file a copy of the deposit receipt. However, the Regulations were amended in 2018 to allow a deposit receipt to be validly filed by the deadline for acceptance (allowance) of the patent application.

All that is now required to rely on a deposit made under the Budapest Treaty is to file a copy of a deposit receipt (and its English translation, if required), within 12 months from the date that a first Examination Report is issued, although an extension of time is possible. Where the deposit is not in the name of the applicant, it will also be necessary to inform IPONZ of how the applicant is entitled to the deposit.

Access to the deposit

In some Contracting States to the Budapest Treaty, the so-called 'expert solution' allows a third party to access the deposited microorganism in certain circumstances. The microorganism deposited under the provisions of the Budapest Treaty can be accessed only by an independent expert and solely for experimental purposes. It may not be transferred to third parties. There are currently no IPONZ guidelines as to how an interested party would request a deposited sample from IPONZ under the Budapest Treaty, but we understand these guidelines are currently under consideration by IPONZ.