THE BUDAPEST TREATY:
CODE OF PRACTICE FOR IDAs

OBLIGATIONS OF THE DEPOSITOR

PRACTICALITIES

Content

• Information concerning the cultivation, storage and viability testing of the mo

• Mixed cultures

• Unofficial notifications to the depositor

• Payment for a deposit

• Withdrawal of a deposit

• Conversion of deposits originally made outside the purview of the BT

• Co-deposit by more than one depositor

• Selling of the rights on a deposit

• Depositor versus applicant of a patent

Information concerning the cultivation, storage and viability testing of the mo

In most cases the depositor provides the relevant information concerning the cultivation, storage and viability testing of the mo. Most IDAs request this information on an 'Accession form'.

If this information is missing, the requirements of rule 6.1. are not fulfilled. Until this information has been presented and viability has been demonstrated, the IDA can not accept the mo, and consequently, the IDA is not to forward the international form BP/4 (Receipt and Acceptance) or BP/9 (Viability statement). Depositors should be aware that insufficient information can delay the completion of the viability test.

The IDA shall notify the depositor immediately that information is missing and invite him to comply with the specified requirements (rule 6.4.(b)). In practice this is done either by phone, fax, e-mail or in writing (cf. model form I).

Given the IDA's scientific expertise, this lack of information is often not a technical difficulty but merely an administrative problem. As such, the IDA may continue the deposit procedure applying its own standard methods for preservation and cultivation. If necessary the IDA should discuss with the depositor whether these methods are appropriate.

The date of receipt of the viable biological material becomes the date of deposit, but only once the depositor has complied with all his obligations.

Mixed cultures

Most IDAs accept mixed cultures.

The deposit of a mixed culture is however not without difficulties. Due to antagonism and different growth rates, for example, testing the viability of the different components of the mixture can be problematic. Also, it is not obvious that the composition of the mixture will remain the same after preservation.

For these reasons, most IDAs recommend that the depositor separates the different components and deposits them individually.
In such cases, the depositor is charged for each separate deposit.

If, however, a component can not be readily dissociated (e.g. organisms living in symbiosis) the mixture might be deposited. The depositor is obliged to provide the IDA with a description of the components of the mixture and at least one method that would allow for the verification of their presence. The IDA will accept the mixture on the conditions that it is possible to test the viability of each of the organisms in the mixture individually and it is possible to ensure that the mixture can be preserved without losing one of the components.

Unofficial notifications to the depositor

In principle, the IDA does not inform the depositor about the deposit date and the "provisional" accession number until the viability of the mo has been demonstrated.
Nevertheless in exceptional cases (to be decided by the IDA on an ad hoc basis) the IDA can give this information "unofficially" to the depositor. This can be done by phone, by e-mail or by fax. The depositor must acknowledge that this information becomes official only on completion of the viability test and on issue of the forms BP/4 and BP/9. Also, he must realize that any use of unofficial information is at his own risk.
To avoid abuse of this information an appropriately worded document should be used. For this purpose model form II can be used.

Payment for a deposit

The IDA has accepted the deposit once the international forms BP/4 and BP/9 have been forwarded to the depositor. At such time, the deposit is to be regarded as valid according to the Budapest Treaty.
The payment for a deposit is a matter of contractual agreement between the IDA and the depositor. Therefore, the IDA may decide not to issue form BP/4 (Receipt and Acceptance) until arrangements for payment have been made.

Withdrawal of a deposit

The depositor can not withdraw the deposit for the period specified in rule 9.1^(a). An IDA may accept the withdrawal of a deposit only on the condition that the international forms BP/4 (Receipt and Acceptance) and BP/9 (Viability statement) have not yet been sent to the depositor.

However, the deposit procedure is to be regarded as complete from the date these forms have been forwarded, and the depositor may not withdraw the deposit.

Conversion of deposits originally made outside the purview of the BT

The BT contains no restrictions as to the source of the deposited material. After having made a deposit outside the BT (e.g. safe or public deposits, or deposits formerly made under national patent law) with an IDA, a depositor may subsequently convert such a deposit to a deposit under the BT without it being necessary for him to redeposit the mo, provided that he complies with all requirements of the BT.

The date of deposit remains the date on which the IDA received the viable organism. It is essential to remember that the date of request for conversion comes prior to the filing date of the patent application. As such, it is imperative in all cases of conversion that both the date of deposit and the date of receipt of the request for conversion must be stated on the international form BP/4 (Receipt and Acceptance). The legal status and consequences governing the deposit during the period between these two dates is determined by national law.

If an IDA receives a culture for other purposes than to make a deposit (e.g. for an identification), and subsequently the depositor wishes to deposit this culture for patent purposes, the date of receipt of the culture for the first purpose is not to be accepted as date of receipt of the patent deposit. If sufficient material is still available at the IDA, the depositor does not need to transmit additional material. Since this kind of deposit is not to be regarded as a conversion but as an original deposit, the date of receipt of the request is to be designated as the deposit date.

Of course in all these cases rule 6.4.d retains priority; it states that the earliest date on which an IDA can accept a deposit under the Budapest Treaty is the day it acquired the status of International Depositary Authority.

Co-deposit by more than one depositor

It is possible that two or more depositors may wish to deposit a culture under the BT together. For practical reasons one of the depositors should be identified as the primary contact person when communicating with the IDA.

Selling of the rights on a deposit

An IDA deals directly and exclusively with the original depositor. However, if the rights on a deposit are sold, or if the name of the depositor is changed, the original depositor (or his successor in title) should notify the IDA. At such time, the IDA can contact both relevant parties to request written confirmation of any such changes. The IDA will then communicate with the party that proved to have the actual rights on the deposit.

Depositor versus applicant of a patent

The depositor is not necessarily the same person as the applicant of the patent referring to the deposited material. In this case, the depositor should authorise the applicant to make clear reference to the biological material in the patent application and should also give his fully informed and irrevocable consent that the deposited material is to be made available to the public.
Such authorisation does not affect the relationship between the depositor and the applicant or change the position of the authorised applicant. The applicant remains a third person within the terms and intended scope of the BT and may obtain a sample under the conditions prescribed in rule 11.2 (ii) (i.e. with the depositor=s agreement) or rule 11.3 (iii) (i.e. applicant as a legally entitled party).

However, if it is apparent from a certified request for release of samples pursuant to rule 11.3. that the depositor and the applicant are not identical and the IDA has doubts whether the applicant has been authorised, the IDA should not release the sample but notify the relevant patent office immediately. In the absence of such an authorisation by the depositor, the certification by the patent office is deemed invalid and, consequently, the conditions of rule 11.3 (iii) are not fulfilled.

The depositor should provide the IDA with a letter stating the name of the applicant who is authorised to refer to the deposit in a patent application.