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

Related Chapters:

• 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings

Office Practice Relating to Applications Filed on or after 1 July 2022

Australian Patent Office practice, in its role as an ISA, is as follows:

• 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. 
   

• After initial processing by the PCT unit the application is passed to the relevant examination section. Validation of the sequence listing is then performed in section to determine if it complies with WIPO ST.26  
   

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

• The search examiner reviews the compliance report and in the event that the listing is non-compliant then the examiner provides a comment in the opinion at Box VII PCT/ISA/237.  Examiners are to then to establish the opinion to the extent that a meaningful search could be carried out without a WIPO ST.26 compliant listing.
   

• 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.   

Office Practice Relating to Applications Filed Before 1 July 2022

Australian Patent Office practice, in its role as an ISA, is as follows:

• 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. 
   
• The Commissioner may request that if the applicant only files a paper form of the sequence listing, that the applicant files an additional copy of those sequences in electronic form.  Any sequence listing in electronic form submitted in addition to the paper sequence listing contained in the specification must be identical to that paper sequence listing, and must be accompanied by a statement that [Rule 13ter.1(a) Ad. Inst. 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)).

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).

Note: If the applicant has not supplied an electronic form of the listing, then the three person team should consider whether or not an electronic sequence listing is necessary for a comprehensive search.  If it is decided by the three person team that a comprehensive search can be completed without the electronic form of the listing, then the search should proceed.  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.

• 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.