Wednesday, June 24, 2015 T 2068/11 - The Budapest Treaty, also in far away countries

This decision deals with a lack of sufficiency of disclosure under Art 83 EPC (R 28 EPC 1973 and R 31 EPC 2000) as far as the deposit of microorganisms (in this case a new Lactobacillus delbrueckii strain isolated from Japanese milk) under the Budapest Treaty is concerned. 

A deposit under national law (here: Japan) is insufficient to consider it equivalent to a deposit under the Budapest Treaty, even though R 28 EPC 1973 does not mention or refer to the Budapest Treaty, and even though it does not refer to national laws for incorporation of  the Budapest Treaty. Hence, when converting a deposit under national law to a deposit under the Budapest Treaty, the applicant better makes sure that this conversion takes place before the date of filing of the European patent application. Or even better, deposit the material directly under the Budapest Treaty before the PCT application is filed.

Interestingly, the Board notes that decision T 815/90 is outdated and that the decision therein - to give the applicant the benefit of the doubt - was probably a result due to lack of guidance in 1984 on how to correctly deposit biological material under the Budapest Treaty, which was solved by the issue of the (clear) 1986 guidance.

Summary of Facts and Submissions

I. European patent application No. 05720034.7, filed on 4 March 2005, is based on international patent application PCT/JP2005/003762. It claims priority rights from Japanese patent application No. 2004059912, which was filed on 4 March 2004 and published on 15 September 2005. Entry into the European regional phase took place on 2 October 2006. The European patent application was published on 29 November 2006.

II. The applicant (appellant) filed an appeal against the decision of the examining division to refuse the European patent application. The examining division decided that the main request and the first auxiliary request before it did not meet the requirements of Article 83 EPC in conjunction with Rule 31 EPC (former Rule 28 EPC 1973), and that the second and third auxiliary request did not meet the requirements of Article 83 EPC.