CASRIP Newsletter - Spring 1996, Volume 3, Issue 1
Update on the EPO Deposit Requirement
Although it is clear that a deposit of biological material necessary to the enabling disclosure in a European patent must be made by the filing date, there had been some uncertainty about when the deposit information must be submitted. In its decision G2/93, the Enlarged Board of Appeal held that this is a substantive issue and that the deposit information must be submitted within 16 months of the filing date or the priority date if priority is claimed in accordance with Rule 2B(2)(a) EPC (published in OJ EPO 1995, 275).
In an earlier case, the Legal Board of Appeal held that an applicant must be given an opportunity to remedy the deficiency created by failure to submit the information in time (J8/89, OJ EPO 1989, 9). That Board considered this deficiency to be analogous to failing to submit priority documents in time. It further noted that the Guidelines for Examination in the EPO require the Receiving Section to notify the applicant if this information was not supplied in time.
In the case before the Enlarged Board of Appeal, the information concerning the deposit number was not filed until almost seven years after the priority date of the application. The applicant argued that a sufficient disclosure had been made when the material was deposited, and that substituting one reference number for another is permissible under Article 123(2) EPC, which prohibits the addition of new subject matter after filing.
The Enlarged Board of Appeal held that providing the accession number is necessary in order to give legal effect to the applicant's unreserved and irrevocable consent to public availability of the deposit (which is required for a sufficiency of disclosure under Article 83 EPC). Whether it is possible in an individual case to publish a late-submitted accession number with the application is irrelevant as the principle of legal certainty requires adherence to the time limit.
Applicants should also note that the EPO considers claims identifying the claimed subject matter only by references such as "hepatitis A virus strain HM-175" to be "arbitrary laboratory designations" and therefore unclear under Article 84 EPC. This can be remedied by reference to an accession number, but only if the deposit was made by the filing date (PCT filing date for such applications) and the accession number was provided by the 16-month deadline.
- Karen Canady