In recent years, patent offices have embraced various technological advancements. For example, five years ago US biotech patent applications/responses were largely filed via paper and disk (later a “disc”) with few opting for electronic submission. That has undoubtedly been turn upside-down with the vast majority now filed via the Electronic Filing System (EFS). Though these innovations theoretically allow for more efficient filing processes and faster response times, many aspects have not been updated on the same timeline.
We receive questions all the time regarding the language and specific requests outlined in generic Notices from the USPTO with regards to filing via EFS. With that in mind, let me clarify a few of the most common inconsistencies seen in a Notice to Comply, Notice to File Missing Parts, and Notice to File Corrected Application Papers, etc:
1. “This application does not contain, as a separate part of the disclosure on paper copy, a “Sequence Listing” as required by 37 CFR 1.821(c)…”
CLARIFICATION: Sequence Listings are NOT required to be in paper form as they can be uploaded directly onto PAIR via EFS. Further, when a Sequence Listing is filed electronically, page fees are not charged, however, when/if supplemented with a PDF copy of the Sequence Listing, page fees are often applied.
2. “Applicant must provide an initial paper or compact disc copy of the “Sequence Listing”…”
CLARIFICATION: This is outdated language that does not necessarily apply to EFS submission or paper and disc filing. When filing via paper and disc, the applicant must submit a paper copy and a compact disc copy, not or a compact disc copy. When filing via EFS, the applicant need only file the text copy of the sequence listing.
3. “…as well as an amendment specifically directing its entry into the application…”
CLARIFICATION: “An amendment specifically directing its [Sequence Listing] entry into the application” is only required when filing via EFS. It is not required if filed via paper and disc.
4. “…and a statement that the content of the sequence listing information recorded in computer readable form is identical to the written (on paper or compact disc) sequence listing…”
CLARIFICATION: Again, please see Points 1 and 2 above – a paper copy is not required. Furthermore, the passage continues on to reference 37 CFR 1.821(e) wherein the same terminology is present, which implies that the CFR itself has yet to embrace the USPTO’s own advancements in technology.
5. Possibly the most obvious support of not keeping up with the times is the omission of the fact that you can file via EFS and what exactly is required to do so.
6. This last issue does not directly come from any specific Notice, however, it is directly related. A statement is required to be filed along with a Sequence Listing. That’s a fact. The statement attests that the sequences in the Sequence Listing are identical to those in the application and does not contain any new matter (if applicable). So who should sign it? The attorney or the preparer? The answer is personal preference, as the CFR does not require that the signer be of record.
Bottom line, and in the simplest terms, to satisfy the Sequence Listing requirements when filing via EFS, all that is necessary is a text copy (.txt) of the Sequence Listing, a statement attesting that the sequences in the Sequence Listing are identical to those in the application and does not contain any new matter (if applicable), and a paragraph incorporating the same.
-The Harbor Consulting Team
For more information regarding Harbor Consulting, please visit www.seqidno.com.
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