Taiwan: Taiwan does not recognise a deposit made in an international depositary

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: Taiwan does not recognise a deposit made in an international depositary

As Taiwan is not a signatory to the Budapest Treaty, the effect of a deposit made in an international depositary under the Budapest Treaty is generally not recognised in Taiwan. Accordingly, even though a biological material has been deposited in an international depositary in order to meet the enabling requirement, the applicant is still required to make a corresponding deposit in a domestic depositary designated by the Taiwan Intellectual Property Office (TIPO). A late deposit will be deemed valid only if the certificates of deposit issued by both the international and domestic depositaries are filed before a statutory deadline, i.e. within four months from the filing date or sixteen months from the earliest priority date claimed, whichever is applicable. Further, in the event that a deposit is deemed invalid, the applicant may file a request for reinstatement of the deposit procedure within thirty days from the day following the cessation of the cause for delay.

For a patent application filed on December 29 2015 in Taiwan claiming the priority date of February 29 2014 from the counterpart US application with a deposit of biological material, the applicant needed to make a corresponding deposit at the domestic depositary to fulfil the enabling requirement. Accordingly, the applicant completed the necessary forms and submitted to the depositary the forms in which it was indicated that six vials of bacterial, i.e. the relevant biological material, are to be deposited in accordance with the Rules for Depositing Biological Materials. Upon perusal, the depositary suggested that a total of 25, instead of six vials, of bacteria be deposited. Thus, the applicant proceeded to make arrangements for the preparation of 19 additional vials of the bacteria on an urgent basis, but missed the four-month statutory deadline for filing with TIPO the certificates of deposit issued by an international depositary and the domestic depositary. The applicant then filed a request for reinstatement of the deposit procedure; however, the request was not entertained by TIPO. Against this unfavourable result, the applicant filed an appeal and, in turn, pursued the subsequent administrative litigation procedures.

The applicant argued that since it is time-consuming to prepare 19 additional vials of the bacteria to comply with the depositary's suggestion, he took it for granted that he could wait until the certificate of the deposit of all the 25 vials of the bacteria was available to file both the international and domestic certificates in a lump. The applicant also claimed that he had exercised all due diligence in complying with the depositary's suggestion, and the occurrence of the delay is not an event controllable and attributable to him.

On April 25 2019, the Supreme Administrative Court issued a final judgment upholding TIPO's decision that the deposit is invalid and cannot be reinstated as requested by the applicant. In its judgment, the Supreme Administrative Court interpreted "factors not attributable to the applicant" in a strict manner, indicating that only an event substantially corresponding to "the will of God" or "war" can be considered as a factor not attributable to the applicant. On top of this, the court held that the applicant should have at least deposited six vials of the bacteria in accordance with the Rules for Depositing Biological Materials and filed the international certificate of deposit in a timely manner.

This case suggests that inadvertent negligence might result in irreparable loss to the applicant. A patent practitioner should do his utmost to ensure that a patent application takes every required step towards becoming a patent and give sound advice to his clients when a patent practice in Taiwan is not in harmony with international practice.

lin.jpg

Ming-yeh Lin


Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and SHARED ros bottom lb

More from across our site

Firms explain the IP concerns that can arise amid attempts by brands to show off their ‘Canadianness’ to consumers
Counsel say they will be monitoring issues such as the placement of house marks, and how Mondelēz demonstrates a likelihood of confusion in its dispute with Aldi
The EUIPO expanding its mediation services and a new Riyadh office for Simmons & Simmons were also among the top talking points this week
David Boundy explains why Pierson Ferdinand provides a platform that will allow him to use administrative law to address IP concerns
Developments included an anti-anti-suit injunction being granted for the first time, and the court clarifying that it can adjudicate over alleged infringements that occurred before June 2023
Griffith Hack’s Amanda Stark, one of our ‘Top 250 Women in IP’, explains how peer support from male colleagues is crucial, and reveals why the life sciences sector is thriving
The case, which could offer clarity on the training of AI models within the context of copyright law, will go to trial in the UK next week
CMS IndusLaw co-founder Suneeth Katarki says he plans to hire a patent team in India and argues that IP should play a major role within full-service firms
Partners at the firm explain why they’ve seen more SEP cases at the ITC, and why they are comfortable recommending the forum to clients
The association, which will head to London in 2026, hosted its flagship event in the Californian city in 2005, 2015 and 2025
Gift this article