PCT Newsletter 06/2018: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Consequences of not submitting nucleotide and/or amino acid sequence listings in the correct format to the International Searching Authority

Q:  I am going to file an international application containing a sequence listing as an image file, and realize that, for the purposes of international search, the sequence listing must be filed in electronic form, as a text file.  If I am unable to submit the sequence listings as a text file at the time of filing, will I be invited to do so after filing, and if so, will I have to pay an extra fee for this?

A:  Each of the 22 operational International Searching Authorities (ISAs) require the applicant to furnish any sequencing listing in electronic form (as a text file) if the sequence listing is to be taken into account for the purpose of international search.  More specifically, it must comply with the standard provided for in Annex C of the Administrative instructions under the PCT ( “Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications under the PCT” )1 (hereinafter “Annex C”).  Note that the provisions in Annex C are also recommended in WIPO Standard ST.25 ( “Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in Patent Applications”)2.  Furthermore, the sequence listing must also be transmitted on an electronic carrier that is acceptable to the ISA concerned.

If the international application contains a sequence listing that does not meet the necessary requirements, for example, if it has only been submitted in paper form or as an image file (for example, PDF format), or if it has been submitted as a text file which does not comply with Annex C, the ISA will invite you to furnish, within a fixed time limit, a sequence listing complying with the required standard for the purposes of international search (using Form PCT/ISA/225 (“Invitation to furnish nucleotide and/or amino acid sequence listing and pay, where applicable, late furnishing fee”)).  The invitation may also, in accordance with PCT Rule 13ter.1(c), request the payment to the ISA of a late furnishing fee, the amount of which is determined by the ISA, but which may not exceed 25% of the international filing fee.  Of the 22 ISAs, the following 12 ISAs currently charge such a late furnishing fee:

  • National Institute of Industrial Property (Brazil)
  • State Intellectual Property Office of the People’s Republic of China
  • Egyptian Patent Office
  • European Patent Office (EPO)
  • Finnish Patent and Registration Office (PRH)
  • Israel Patent Office
  • Indian Patent Office
  • Korean Intellectual Property Office
  • Federal Service for Intellectual Property (Rospatent) (Russian Federation)
  • Turkish Patent and Trademark Office (Turkpatent)
  • United States Patent and Trademark Office (USPTO)
  • Visegrad Patent Institute (VPI)

The above‑mentioned Form will also invite you to submit a statement confirming that the information contained in the Annex C text file submitted under PCT Rule 13ter.1(a) is identical to the sequence listing forming part of the international application as filed.

If you do not comply with the invitation within the specified time limit, for example, if the subsequently‑filed sequence listing filed in response to the invitation does not comply with the necessary standard, the international search may be restricted, as, in accordance with PCT Rule 13ter.1(d), the ISA will only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.  This means that the examiner may not search claims directed to specific sequences. 

Even if the subsequently‑filed sequence listing complies with the necessary standard, it is important to be aware that if a late payment fee has been requested by one of the above‑mentioned ISAs, but you do not pay that fee within the specified time limit, the sequence listing furnished in reply to the invitation may be disregarded.

For information on the types of electronic carriers that are required by each ISA, and to find out which ISAs charge a late furnishing fee under PCT Rule 13ter.1(c), and the applicable amount of that fee, please see the relevant part of the PCT Applicant’s Guide, Annex D.

Please note that any sequence listing which is to form part of the international application must be filed at the same time (or at least on the same date) as the rest of the international application.  Also note that, whenever a sequence listing is furnished as an Annex C text file at the time of filing the international application, there is no need to file another copy of the text file for such purposes under PCT Rule 13ter since the text file submitted will be used for both disclosure of the international application and for search purposes. 

You are strongly advised to submit the sequence listing part of the description as an Annex C text file at the time of filing the international application, so that it is in the correct format for the ISA.  Not only will you avoid having to pay any necessary late payment fee to the ISA, but also, any sequence listing part of the description in text format will not be taken into account for calculating the total number of pages/sheets of the international application for which a fee is payable in excess of 30.  When submitting the sequence listing with the international application, it should be identified as part of the international application in the request form.  The way in which you do this will depend on the mode of filing, for example: 

  • if you file using ePCT, the sequence listings must be in Annex C text format (PDF format is not permitted) and must be attached under the “International Search” section. You should check the box “Sequence listings in machine‑readable format are attached for the purposes of international search” and then select “Filed also as part of the international application”; 
  • if you file using PCT‑SAFE, you should first check the box “The description contains a sequence listing” on the Biology tab and then check the box “submitted as part of the description” on the Contents tab when uploading the Annex C text file; or

if you file electronically using the PDF request form when filing with the United States Patent and Trademark Office as receiving Office via EFS‑Web, the relevant box should be checked under item (g) in Box No. IX of Form PCT/RO/101.

  1. See:  https://www.wipo.int/pct/en/texts/pdf/ai.pdf
  2. See:  https://www.wipo.int/standards/en/pdf/03-25-01.pdf