6.1.18.2 Office Practice

Also in this Chapter:

• 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings​​​​​​​

• 6.1.18.3 Summary

Key Legislation:

Administrative Instructions under the PCT:

• s513 Sequence Listings

• Annex C INSTRUCTIONS RELATING TO THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT

• Standard ST.26

Regulations under the PCT:

• Rule 13ter Nucleotide and/or Amino Acid Sequence Listings

Related Chapters:

• 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings

• 6.1.8.2 The Three Person Team (3PT)

• 6.3.8.8 Box VII Certain Defects

• RIO - Processing PCT Tasks - Box VII

• RIO - Create correspondence from examination page

On this page

• Applications filed on or after 1 July 2022

• Applications filed before 1 July 2022

• Office practice flow chart

Applications filed on or after 1 July 2022

The Australian Patent Office, in its role as an International Searching Authority (ISA), uses the following practice:

If the specification discloses a nucleotide and/or an amino acid sequence, the applicant is required to file a sequence listing in XML format which complies with WIPO ST.26 Standard. 

1. The PCT unit carries out initial formalities processing

2. The application is passed to the relevant examination section.

3. The examiner performs validation of the sequence listing to determine if it complies with WIPO ST.26.

4. A copy of the compliance report is then placed on file for later dispatch to the applicant.

5. The search examiner reviews the compliance report.

6. In the event that the listing is non-compliant then the examiner provides a comment in the opinion at Box VII PCT/ISA/237 (see 6.3.8.8 Box VII Certain Defects and RIO - Processing PCT Tasks - Box VII).

   • The examiner establishes the opinion to the extent that a meaningful search could be carried out without a WIPO ST.26 compliant listing.

7. Where the applicant provides a corrected listing, examiners should check whether the corrected listing is accompanied by a statement that the listing does not include matter which goes beyond the disclosure in the international application as filed.

   • Where the statement is not provided, any such correction, rectification or amendment need only be taken into account by that authority for the purposes of the international search or preliminary examination to the extent that a meaningful search or preliminary examination can be carried out without such sequence listing in electronic form.

Applications filed before 1 July 2022

The Australian Patent Office, in its role as an ISA, uses the following practice:

1. An applicant is required to file a sequence listing in paper form, or electronic form on a (ISO9660) CD-ROM, CD-R or DVD if the specification discloses a nucleotide and/or an amino acid sequence.  

   • The PCT unit can issue a defect notice to the applicant if the paper or CD-ROM, CD-R or DVD sequence listing is missing, or if it does not conform to the standard prescribed in Annex C of the Administrative Instructions under the Patent Cooperation Treaty. 

2. The Commissioner may request that the applicant files an additional copy of a sequence(s) in electronic form if the applicant only files a paper form of the sequence listing.

3. Any sequence listing in electronic form submitted in addition to the paper sequence listing contained in the specification must both:

   • Be identical to that paper sequence listing

   • Accompanied by a statement that reads (see Rule 13ter.1(a) and Adminstrative Instruction 513(a)):

‘The sequence listing does not include matter which goes beyond the disclosure in the international application as filed’ (Annex C paragraph 4(vi))

4. The examiner should check whether the electronic listing is accompanied by such a statement.

   • If not, the examiner will then issue an Invitation to furnish the statement (PCT/ISA/225).

   • See RIO - Create correspondence from examination page.

Note: If the applicant has not supplied an electronic form of the listing, then the 3-person team should consider whether or not an electronic sequence listing is necessary for a comprehensive search.  If the 3-person team decides that a comprehensive search can be completed without the electronic form of the listing, then the search should proceed (see 6.1.8.2 The Three Person Team (3PT)).  

For example, if the application relates to a single 10 amino acid sequence, then it may be possible to undertake a search without such a listing in electronic form.  If however the application relates to extensive sequence listings, then the examiner may issue an invitation to supply an electronic listing - see also 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings.

5. The Office will accept the accuracy of any filed listing.

   • The listing so supplied should comply with Annex C, however the Office will not necessarily check the listing for compliance.

   • The Office will check for any physical damage to the disc, and for the presence of viruses.

Office practice flow chart