T 0090/88 25-11-1988

Reasons for the Decision

1. The appeal is admissible.

2. The deposit of the five micro-organisms in question was, as appears from paragraph I above, made before the date of filing of the present European patent application. The depositary institution used in this case, NRRL, was at that point in time, and is still, recognised by the EPO for the purpose of Rule 28 EPC both in its capacity as international depositary authority under the Budapest Treaty and on the basis of a special agreement with the EPO of 29 October 1979 (see OJ EPO 1980, 4 and OJ EPO 1981, 29).

3. The problem in this case is that the deposit was originally made for the purpose of the US priority application without the deposit subsequently being converted into a deposit under Rule 28 EPC or under the Budapest Treaty before the filing of the European application, which may have created a gap in time of almost 14 months with regard to the availability of the deposited organisms to the public. As fully explained by this Board in the decision of 15 November 1988 in case T 39/88 (to be reported in OJ EPO), there may be a deficiency in complying with Rule 28 EPC when the deposit of a culture of a micro-organism, originally made under other legislation, was not converted into a deposit under Rule 28 EPC or the Budapest Treaty before the filing of a European patent application. Nevertheless, due to the lack of clarity in this respect, which was inherent in the system of deposits at that time, it has not been considered as justified to refuse, on this sole ground, a European patent application filed before the publication of the clarifying notice of the EPO dated 18 July 1986 concerning patent applications and European patents in which reference is made to micro-organisms (OJ EPO 1986, 269). This principle does, in the Board's view, fully apply also to the present case and there is for the purpose of deciding this case, therefore, no point in dealing with various submissions made by the Appellant to the effect that the deposit ought to be considered as fully complying with all the requirements of Rule 28 EPC.

4. In the decision under appeal it was left open, whether the deposit in question fulfils the requirement of making the deposited strains available during a sufficient period of time (cf. OJ EPO 1978, 303, point 12). There were further made some remarks in paragraph 4 of the reasons for the decision (see sections 3 and 4) concerning the first portion of Claim 1 and a certain part of the description, which seem to be unclear in this context. Finally, it appears from that decision that the Examining Division has not yet completed the substantive examination of the application. The case has therefore to be remitted to the Examining Division for further prosecution.