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Guide for applicants, Part 2: PCT procedure before the EPO (Euro-PCT Guide)

 
 
Applications containing a reference to biological material
147
Under the PCT, the question as to whether a reference to deposited biological material must be included in an international application is left to the national law of the designated states. The PCT, however, prescribes the contents of a required reference and sets the time limit for providing such a reference.
WIPO PCT Guide 11.075-11.087 
OJ 2010, 506
Section 209 AI 
148
A reference to biological material in accordance with the provisions of the PCT is to be regarded by each designated Office as satisfying the requirements of its national law as to the content and time for furnishing the reference. However, a national requirement may be added and become a PCT requirement upon notification to the IB. The EPO has made use of this possibility (see points 149-150).
149
The EPO has notified the IB that if the biological material has not been deposited by the applicant but by someone else, the name and address of the latter person (the depositor) must be stated in the international application. Moreover, a document must be submitted within 16 months from the priority date in which the depositor:
has authorised the applicant to refer to the biological material, and 
has given his/her unreserved and irrevocable consent to the deposited material being made available to the public. 
150
Such authorisation is, however, not required if the depositor transferred his rights in the deposit to the applicant on the filing date at the latest. In that case the document containing the transfer must be submitted instead. For further information see Annex L to the WIPO PCT Guide and the information in the Guide for Applicants, Part 1, points 76 ff.  
151
If any requirement concerning a reference to biological material is not met within 16 months from the priority date of the application, this cannot be corrected in the procedure before the EPO as a designated Office, i.e. upon entry into the European phase. As a consequence the international application may be refused for insufficient disclosure in the course of the examination proceedings before the EPO as designated/elected Office.
152
Details of deposited biological material which are not included in the description should be supplied on a separate form (PCT/RO/134) (Box No. IX, check-box No. 7 PCT request form). This form must be used also if the applicant wishes samples to be made available only to an expert.
153
The furnishing of samples of biological material by the EPO takes place in conformity with Rule 33 EPC. As a consequence, if the requirements of Rule 33 EPC are met, samples of biological material are furnished by the EPO in its capacity as designated Office to third parties as from international publication, i.e. during the international phase. The EPO has notified the IB that if the applicant wishes the biological material to be made available only by the issue of a sample to an expert nominated by the requester, the applicant must inform the IB accordingly before completion of the technical preparations for publication of the international application, where such publication takes place in one of the EPO's official languages. If the international application was not published in an official language of the EPO, notification of the expert solution may be submitted until completion of the technical preparations for publication of the translation of this application. The fact that this solution has been chosen will be published on the front page of the published translation of the application.
OJ 1992, 470
OJ 2010, 498
PCT Newsletter  
7-8/2010, 6 
11/2011, 5