Top of Notices Top of Notices   (206)  December 26, 2023 US PATENT AND TRADEMARK OFFICE Print This Notice 1517 CNOG  735 

Biotechnology Referenced Items (206, 207, 208, 209, 210, 211, 212)
(206) Changes to Requirements for Orthodox Crop Seed Deposits at the
    Provasoli-Guillard National Center for Marine Algae and Microbiota
             (NCMA) at Bigelow Laboratory for Ocean Sciences

   Biological material that may be deposited for purposes of utility
applications under 35 U.S.C. § 101 includes orthodox crop seeds. Even
though the deposit of biological material is not applicable to patent
applications submitted under the Plant Patent Act (35 U.S.C. §§ 161-164),
utility applications directed to plants must meet the requirements of
35 U.S.C. § 112. In order to ensure compliance with 35 U.S.C. § 112 for
patents for utility plant inventions, the deposit of orthodox crop seeds
may supplement the disclosure in the specification to provide an adequate
written description of the invention and to enable those skilled in the art
to make and use the claimed invention. A deposit must comply with the
biological deposit rules (37 CFR 1.801 through 1.809) to be relied upon to
meet the requirements of 35 U.S.C. § 12.

   Currently, there are eight Budapest Treaty International Depositary
Authorities (IDAs) that accept plant seeds for deposit. As one of those
eight, the Provasoli-Guillard National Center for Marine Algae and
Microbiota (NCMA) at Bigelow Laboratory for Ocean Sciences, has recently
updated its requirements regarding the number of orthodox crop seeds
required for a deposit.

   In the past, NCMA required 2,500 seeds per orthodox crop seed deposit.
These 2,500 seeds were to be packaged in 25 packets of 100 seeds. NCMA has
reduced the number of orthodox crop seeds required for patent seed deposits
to 25 packets of 25 seeds for deposit, for a total of 625 orthodox crop
seeds per deposit.

   The biological deposit rules require that should there be requests that
exceed the availability of a deposited material, the depositor must replace
or supplement the originally deposited material. Additionally, should the
biological deposit no longer be viable or become contaminated, the
depositor would be required to supplement or replace the original
biological deposit. A depositor's failure to replace a deposit causes the
application or patent involved to be treated in any Office proceeding as if
no deposit were made. See 37 CFR 1.805.

   As stated in the Official Gazette notice of March 26, 2019 (1460 OG
263), the USPTO is amending the Manual of Patent Examining Procedure at
§ 2403.02 to indicate that, so long as the number of seeds deposited
complies with the requirements of the IDA where the deposit is made, the
USPTO would consider such a compliant submission as satisfying the rules
under 37 CFR 1.801 through 1.809. It should be noted, however, that
although a deposit of 625 seeds is compliant for submission to NCMA, other
IDAs may have different minimum requirements. Accordingly, any depositor
should confirm that the number submitted to a specific IDA complies with
that IDA's requirements for seed deposits.

   Questions about this announcement may be directed to Mary C. Till,
Senior Legal Advisor, Office of Patent Legal Administration, 571-272-7755.
Comments may be directed to the Patent Practice mailbox at Electronic mailbox inquiries typically are
returned within one business day.

October 22, 2019                                               ANDREI IANCU
                  Under Secretary of Commerce for Intellectual Property and
                  Director of the United States Patent and Trademark Office

                              [1468 OG 205]