Sequence Listings at the EPO

The European Patent Office (EPO) has recently issued an updated Notice concerning the filing of sequence listings which comes into force on 1 January 2014.

In Europe, if a patent application involves nucleotide or amino acid sequences, a sequence listing must be prepared in accordance with WIPO Standard ST25 and filed with the EPO. In order to avoid the EPO issuing a Communication requesting the filing of a sequence listing and payment of a late furnishing fee, the sequence listing should be filed with the application. The failure to provide the EPO with the required sequence listing may result in the potential refusal of the application.

The majority of this Notice and current practice remains unchanged, however, the main update is in view of Decision J 8/11, a recent EPO Board of Appeal case. The Notice has been amended to reflect this decision and clarifies that prior art sequences which have been identified by their database accession number and either the version number or database release number do not need to be included in the application as originally filed. It is essential to include either the version number or database release number in the application so that the correct sequence may be identified when the database is potentially updated. In the case of any doubt and in particular where those sequences may be recited in the claims, we would strongly advise including the full sequence data in the application. This will avoid any doubt over the specific sequence information and permit the recitation of the specific nucleotide or amino acid sequences in the claims whilst complying with the strict European added subject-matter requirements.

The Notice also clarifies that in order for a sequence listing to form part of the specification of a divisional patent application before the EPO, the sequence listing must be filed together with the other documents making up the divisional application. Thus, an applicant cannot rely on the sequence listing filed on the parent application.

Finally, the EPO continue to promote the use of their BiSSAP software, however, it remains permissible to any program, such as PatentIn etc, provided the sequence listing complies with WIPO Standard ST25.

Anna Hally, European Patent Attorney