Under the proposed rule change, “any deposit of biological material [must] be made before publication of a patent application, and…all restrictions on access to the deposited material [must] be removed upon publication.”
One of the rationales for the proposed rule changes proffered by the USPTO is that the changes aim to bring USPTO practice regarding biological deposits in line with the practice of publishing patent applications under the American Inventors Protection Act (AIPA) of 1999. Under the AIPA, patent applications, subject to certain exceptions, are published 18 months from their earliest priority date. In exchange for publication, the applicant has a provisional right to a reasonable royalty from an infringer from the time of publication of the application to the issuance of the patent under 35 U.S.C. § 154(d).
The USPTO argues that 35 § U.S.C. 122, as amended by the AIPA, stipulates that only those publications that provide an enabling disclosure are entitled to provisional rights. Although noting that several Federal Circuit decisions, including In re Argoudelis and In re Lundak, held that deposits were required prior to, or at the time the patent became public, i.e., the issue date, the USPTO argues that such cases were decided before, and therefore, superseded by, the AIPA.