Taiwan adopts new approach to biotechnology-related invention applications

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

Taiwan adopts new approach to biotechnology-related invention applications

Sponsored by

saint-island-400px.png
plant-tissue-culture-facility-2223464.jpg

Fiona Yin of Saint Island International Patent & Law Offices explains the ramifications of an announcement by the TIPO with regard to the implementation of WIPO Standard ST.26

In applying for biotechnology-related inventions, apart from submitting to the Taiwan Intellectual Property Office a copy of the specification with claims and necessary drawings, inter alia, the applicant should also pay attention to:

  • Whether the claimed invention involves a sequence of nucleotides or amino acids and hence a sequence listing needs to be filed; and

  • Whether it is necessary to make a domestic deposit of the involved biomaterials to meet the enabling requirement.

An announcement in July 2022 by TIPO relating to the above requirements is summarised as follows.

WIPO Standard ST.26 WIPO Standard ST.25 now only applies to any and all biotechnology-related invention applications filed before July 1 2022; i.e., it is only necessary to submit TIPO sequence listings in electronic TXT format for such cases. Following the adoption of a new standard by WIPO, starting from August 1 2022, sequence listings in XML files prepared in accordance with WIPO Standard ST.26, rather than the ST.25 standard, must be submitted with the relevant biotechnology-related invention applications in Taiwan.

Although nucleotide or amino acid sequences associated with biotechnogy-related inventions are mostly referred to in the Specifications, in order to facilitate exchange of sequence information and the necessary prior art searching and analysis, the applicant is required to prepare WIPO Standard sequence listings in XML files separately and attach the same to the electronic copy of the specification as part of the disclosure of the invention.

When a foreign applicant obtains the filing date of a patent application in the original language (for example, In English) and requests a belated submission of the Chinese version specification, Chinese version sequence listings prepared in accordance with WIPO Standard ST.26 need to be filed as well.

With regard to divisional applications, the applicant may choose to file sequence listings prepared in accordance with WIPO Standard ST.26 or sequence listings in TXT files, as is its parent application.

Viability statement

As Taiwan is not a member country of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, the effect of a deposit made in an international depository under the treaty is generally not recognised in Taiwan. Hence, although certain biomaterials have been deposited in an international depository to meet the enabling requirement, the applicant is still required to make a corresponding deposit in a domestic depository designated by TIPO.

A domestic deposit can be exempted only when the international deposit was made in the UK, Japan, or South Korea, with which Taiwan has signed respective reciprocity agreements with regard to the depositing of biomaterials. In this respect, the certificates of deposit issued from the depository in the above three countries still need to be filed within four months from the filing date or 16 months from the earliest priority date claimed, whichever is applicable.

Furthermore, according to the announcement, a statement of viability must be indicated on the certificate of deposit. If a certificate of deposit does not contain a viability statement, or contains an unclear statement, the applicant shall be notified to submit a certificate of viability within the statutory period mentioned above. Otherwise, the biomaterials shall be deemed not deposited in the first place.

more from across site and SHARED ros bottom lb

More from across our site

Justin Hill and Marie Jansson Heeks, part of an 18-strong team to have joined Crowell & Moring, explain why IP client advice must go beyond only being called upon for patent disclosure
To mark the EUIPO having processed five million EUTM and REUD applications, Managing IP speaks to the most prolific representatives to uncover how they stay at the top of their game
The merger marks Rouse’s second M&A deal within a month, and will provide access to Arnold & Siedsma’s UPC offering
Simon Tønners explains why IP provides the chance to work with some of the most passionate, risk-taking, and emotionally invested clients
The co-leaders of the firm’s new SEP practice group say the team will combine litigation and prosecution expertise to guide clients through cross-border challenges
Boasting four former Spruson & Ferguson leaders and with offices in Hong Kong and Singapore, the IP firm aims to provide fast, practical advice to clients
Partners at three law firms explain why trade secrets cases are rising, and how litigation is giving clients a market advantage
Delegates at a conference unpicking the UK’s relationship with the UPC are hopeful of strengthened UK involvement – so should we all be
News of a litigation funder suing its co-founder and a law firm over trade secrets infringement, and a strategic hire by Womble Bond Dickinson were also among the top talking points
Managing IP’s parent company, LBG, will acquire The Lawyer, a leading news, intelligence, and data-driven insight provider for the legal industry, from Centaur Media
Gift this article