Biological Sequence Data

On 1 April 2005, the European Patent Office introduced new provisions for PCT ('international') applications that include biological sequence data.

If the European Patent Office is selected as the International Searching Authority (ISA) and/or the International Preliminary Examining Authority (IPEA), the sequence listing should be provided in paper and electronic form at the time of filing the international application[1]. The sequence listing must meet the standards given in Annex C of the Administrative Instructions under the Patent Cooperation Treaty[2].

Although the paper and electronic sequence listings can be filed at a later date, this will incur a late filing fee of € 200. This fee is in accordance with Articles 13ter.1(c) and 13ter.2 of the PCT[3].

Therefore we recommend that care is taken to file complete and proper paper and electronic sequence listings at the time of filing the international application. The use of dedicated software (such as PatentIn[4]) to generate sequence listings should reduce the risk of a sequence listing not meeting the required standards.

This change in EPO requirements is particularly relevant to applicants who are nationals or residents of European countries and may also be relevant to applicants who are nationals or residents of countries such as Canada, Japan, New Zealand, Russia, Singapore, South Africa and the United States of America.

Applicants who are US nationals or residents should remember that, as of 1 January 2004, the EPO has resumed its role as an ISA and IPEA for US-originating PCT applications containing one or more claims relating to the field of biotechnology.

If you require any further information please contact your usual Life Sciences & Chemistry group contact.

Rachel Williams

Notes:

[1] The EPO's official announcement can be accessed at: http://www.european-patent-office.org/epo/pubs/oj005/03_05/03_2255.pdf

[2] Annex C is available at: http://www.wipo.int/pct/en/texts/pdf/ai.pdf

[3] Articles 13ter.1(c) and 13ter.2 can be accessed at: http://www.wipo.int/pct/en/texts/pdf/pct_regs.pdf

[4] PatentIn software is available from the USPTO: http://www1.uspto.gov/web/offices/pac/patin/patentin31rel.htm