On June 18, 2015, the Japan Patent Office and the Taiwan Intellectual Property Office launched the Cooperative Program on Mutual Recognition of Deposit of Biological Materials for the Purpose of Patent Procedure.

This program is the first that TIPO has ever had with a foreign country, which also makes TIPO the first nonmember state of the Budapest Treaty that Japan has signed onto such a programme with.

Peter Dernbach, a partner at Winkler Partners in Taipei says that the program will bring the following benefits:

Faster patent application process. Any application on both sides which meets the following two conditions will no longer need to make repeated deposits: (1) their applications were filed on or after the implementation date of the program and (2) their applications were filed along with copies of the deposit certificates submitted before the corresponding deadlines.

No more duplicate deposits. Through the programme, the JPO and TIPO will recognize the deposit of biological materials in a local deposit institution of the other country, so no duplicate deposit is needed for patent applications involving biological materials.

Lower application costs. For applications which have already been filed in Taiwan, for which the related biological material is deposited at an international deposit institution in Japan, the applicant can request for furnishing the biological materials from Japan rather than incurring the cost of depositing them in Taiwan.

Flexibility to Taiwanese patent applicants. By submitting the certification grant by Japanese depository institutions within four months after the application date in Taiwan, or within 16 months after the earliest priority date, TIPO will accept the date the applicant submitted the certification as the date the “deposit procedure” was finalized in Taiwan.

“A final benefit from the Taiwan side is that this agreement may pave the way for additional bilateral agreements with other leading patent offices. Given Taiwan’s unique political situation, it is not a member of the Budapest Treaty, or many other international conventions,” adds Dernbach.

Once this program is implemented, any TIPO applicants who intend to file patent applications relating to biological materials with JPO or any Japanese applicants who plan to file applications relating to biological materials with TIPO are able to deposit their biological materials in nearby designated depository institutions.

The designated depositories are the Food Industry Research and Development Depository Institute (FIRDI) of Taiwan, the International Patent Organism Depositary of the National Institute of Technology and Evaluation (NITE-IPOD) and the NITE Patent Microorganisms Depositary (NPMD).

It is unlikely that the number of depository institutions will increase in the short term, unless the institutions cannot handle the workload. “Adding institutions may lead to regulatory and enforcement issues if multiple institutions in locations with different procedures are involved,” Dernbach says. “Perhaps following successful implementation of the program, the potential of more institutions could be considered.”