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Patent Deposits


Overview & First Steps

In 2013, the World Intellectual Property Organization (WIPO) designated Bigelow’s NCMA as an International Depositary Authority (IDA) for the deposit of biological material for the purposes of utility patent procedure under the Budapest TreatyWe currently accept vegetatively propogated plant tissue, crop seed, bacteria (non-pathogenic), algae (unicellular and multicellular), protozoa (non-parasitic), archaea, and aquatic viruses. 

To  make a deposit for the purpose of utility patent procedure, please contact us at PatentDeposit@bigelow.org or by phone (001) 207-315-2567 x 1. Following initial contact, a depositor’s next step is to review, sign, and e-mail NCMA (also at PatentDeposit@bigelow.org) the Terms and Conditions form which they received along with one of the following deposit forms:

  • Non-Seeds (plant tissue, microbes, algae, etc.) – BP/1
  • Crop Seeds – BP/AF1

 For seeds, if additional material is are needed after your initial deposit, at some point in the future, please complete and submit a BP/AF1A form. 

 

Shipment

Once forms have been received and deemed complete, NCMA will notify the depositor and request that they ship their deposit(s) to NCMA. For safe arrival, we strongly encourage all depositors to use a reputable courier service and appropriate shipping materials.  Prior to shipment, NCMA may request a call with the depositor (depending on prior discussion) to learn more about the material being deposited and ensure seamless and successful deposit(s).  Once shipped, the depositor is asked to provide NCMA a tracking number so that we can track shipment.  Once deposits are received, NCMA will then confirm that all deposits are acceptable and match up with their associated BP/1 or BP/AF1 forms (known as “form acceptance”).  Once deposits are accepted, they will be assigned an accession number.     

The address for shipping to NCMA is:

NCMA Curator - Patent Deposit

National Center for Marine Algae and Microbiota

Bigelow Laboratory for Ocean Sciences

60 Bigelow Drive

East Boothbay, ME 04544

USA

Phone: (001) 207-315-2567 x1

 

Payment & Viability Testing

 Following BP/1 or BP/AF1 acceptance and assigning of an accession number, NCMA then invoices the depositor through its e-commerce platform.  NCMA will also issue the depositor an official deposit ‘receipt’(s) (BP/4), confirming the date that deposits have been received in acceptable condition and all relevant accession number(s).  NCMA will then commence viability testing and furnish the depositor’s first viability statement(s) (BP/9).  The first viability test and statement (per deposit) are included within the depositor’s original deposit fee.  Any additional viability tests will be conducted at the depositor’s request and invoiced accordingly.  NCMA will hold the depositor’s deposit(s) at either -20 ◦C, 4 ◦C (or a temperature determined by the depositor and NCMA) for 30 + 5 years.  NCMA will distribute deposits to appropriate individuals/entities in accordance with Budapest Treaty rules 11.3a, 11.2(ii), or 11.1 (note: only after receiving direction and approval from both the depositor and USPTO).           

 

Schedule of fees 

  • Plant tissue, microbes, algae, etc.
    • $1,000-1,500 / test (on average) for plant varieties (only) not known whether they can be successfully converted to storable material and reanimated from frozen storage.
    • $3,000 for all material above proven to be storable and able to be reanimated from frozen storage.  Fee includes tissue preparation* (in the case of plant tissue), initial basic viability testing (Evan’s Blue), and storage, frozen or lyophilized for 30 years + 5 years.
    • $500 for an additional viability statement
    • $200 for furnishing of deposited material
    • $175 additional service charge for furnishing deposited plant tissue as live nodes on agar  
    • $25,000 for perpetual culturing for 30 years + 5 years (includes first viability statement) 
  • Crop Seeds
    • $1,500 for initial basic viability testing and storage for 30 years + 5 years
    • $500 for an additional viability statement
    • $200 for furnishing of deposited material 

*Preparation involves excising meristematic tissue from plantlets or culturing callus tissue.  Working with baby plants in soil might require additional fee; case by case.  

Requests for Release of Material under Patent Deposit 

NCMA keeps all information about patent deposits confidential, and only releases material on the instruction of the depositor or in accordance with the requirements of the patenting process.

Budapest Treaty deposits 

Every time a sample of your biological material is released, you will be officially notified of the name and address of the recipient.  Biological material is made available to those entitled to receive them under Rule 11 of the Treaty, i.e.:

  • The patent office(s) with which your application has been filed (11.1).
  • Anyone having depositors specific written authorization to receive a culture (11.2).
  • Anyone making their request on an official form on which the relevant patent office has certified that they are entitled to receive a culture and that the patent office has submitted directly to NCMA (Rule 33 EPC 11.3a).
  • In cases where the Expert Solution (Witness) clause has been requested at the time of application, sample will only be made available to a nominated exert - Rule 32 EPC (11.3a).
  • In certain cases, where a patent has been granted and published (e.g. in the US), no certification is required.  In these circumstances, incontrovertible evidence that the patent has been issued is required.  In these circumstances, incontrovertible evidence that the patent has been issued is required before a sample is released.

An expert witness is 1) any natural person provided that the requester furnished evidence, when filing the request, that the nomination has the approval of the applicant; 2) any natural person recognized as an expert by the President of the EPO.

The nomination of the expert witness must be accompanied by a declaration from the expert vis-a-vis the applicant in which he/she enters into the undertaking given pursuant to Rule 33 EPC until either the date on which the patent expires in all the designated States or, where the application has been refused, withdrawn or deemed to be withdrawn, until the date referred to in Rule 32(1)(b) EPC, the requester being regarded as a third party.

 

Requests for Release of Material under Patent Deposit

NCMA keeps all information about patent deposits confidential, and only releases material on the instruction of the depositor or in accordance with the requirements of the patenting process.

Budapest Treaty deposits

Every time a sample of your biological material is released, you will be officially notified of the name and address of the recipient.  Biological material is made available to those entitled to receive them under Rule 11 of the Treaty, i.e.:

  • The patent office(s) with which your application has been filed (11.1).
  • Anyone having depositors specific written authorization to receive a culture (11.2).
  • Anyone making their request on an official form on which the relevant patent office has certified that they are entitled to receive a culture and that the patent office has submitted directly to NCMA (Rule 33 EPC 11.3a).
  • In cases where the Expert Solution (Witness) clause has been requested at the time of application, sample will only be made available to a nominated exert - Rule 32 EPC (11.3a).
  • In certain cases, where a patent has been granted and published (e.g. in the US), no certification is required.  In these circumstances, incontrovertible evidence that the patent has been issued is required.  In these circumstances, incontrovertible evidence that the patent has been issued is required before a sample is released.

An expert witness is 1) any natural person provided that the requester furnished evidence, when filing the request, that the nomination has the approval of the applicant; 2) any natural person recognized as an expert by the President of the EPO.

The nomination of the expert witness must be accompanied by a declaration from the expert vis-a-vis the applicant in which he/she enters into the undertaking given pursuant to Rule 33 EPC until either the date on which the patent expires in all the designated States or, where the application has been refused, withdrawn or deemed to be withdrawn, until the date referred to in Rule 32(1)(b) EPC, the requester being regarded as a third party.