"II. Proceedings before the EPO as international authority under the PCT
1. If a sequence listing in electronic form complying with Annex C to the Adminis- trative Instructions under the PCT (hereinafter referred to as "Annex C") is already available to the EPO as Inter- national Searching Authority (ISA), Supplementary International Searching Authority (SISA) or International Prelim- inary Examining Authority (IPEA), the applicant will not be invited to furnish to it such sequence listing on paper (Article 4(1) of the decision of the Presi- dent 3). The words "sequence listing in electronic form complying with Annex C" mean any sequence listing which gives a detailed disclosure of nucleotide and/or amino acid sequences presented in electronic form in compliance with the standard contained in Annex C (see in
1 Special edition No. 3 of OJ EPO 2007, C.2. 2 See OJ EPO 2010, 328. 3 Any reference to "the decision of the President" in this decision is to be understood as the deci- sion of the President of 12 July 2007 (Special edition No. 3 of OJ EPO 2007, C.1.) as revised by the decision of the President of 26 March 2010 (OJ EPO 2010, 328).
particular paragraph 40 relating to the electronic document format 4).
2. If the international application discloses one or more nucleotide and/or amino acid sequences and a sequence listing in electronic form complying with Annex C is not available to it, the EPO as ISA, SISA or IPEA will invite the applicant to furnish such sequence listing to it under Rule 13ter.1(a) PCT within a non-extendable time limit of one month from the date of the invitation (Article 4(2) of the decision of the President).
3. The furnishing of a sequence listing in response to an invitation by the EPO as ISA, SISA or IPEA under Rule 13ter.1(a) PCT is subject to the payment of a late furnishing fee fixed by the President (see Rule 13ter.1(c) PCT, Article 4(2) of the decision of the President and item 2.2-2 of the schedule of fees and expenses of the EPO 5). The late furnishing fee may be refunded only where the amount was paid by mistake, without cause, or in excess of the amount due (Agreement between the EPO and WIPO, Annex C, Part II, paragraph (1) 6).
4. Any sequence listing in electronic form complying with Annex C which is furn- ished by the applicant under Rule 13ter PCT for the purposes of search only must be accompanied by a statement to the effect that the sequence listing does not include matter which goes beyond the disclosure in the international appli- cation as filed and/or that the sequence listing in electronic form furnished under Rule 13ter PCT is identical to the sequence listing contained in the interna- tional application (paragraphs 4(v) and (vi) of Annex C). Any sequence listing
4 That is text format. For further details, see Practical Advice in PCT Newsletter 07-08/2009 available at http://www.wipo.int/pct/en/newslett/ practical_advice/pa_072009.html
5 Supplement No. 1 to OJ EPO 3/2010. 6 See OJ EPO 2010, 313.
which is furnished under Rule 13ter PCT does not form part of the international application.
5. If the applicant does not, within the applicable time limit under Article 4(2) of the decision of the President, furnish the required sequence listing and pay the late furnishing fee due, the EPO as ISA will not issue any reminder of the invita- tion to furnish the sequence listing, and will search the international application to the extent that a meaningful search can be carried out without the sequence listing (Rule 13ter.1(d) PCT). In this case, the international search report is replaced in full or in part by the state- ment under Article 17(2) PCT. However, if the required sequence listing is received after the applicable time limit but still before the start of the interna- tional search, such sequence listing will be considered as if it had been received within that time limit.
6. Any sequence listing in electronic form that contains (minor) errors with respect to the standard contained in Annex C is considered to comply with Annex C where these errors may be corrected ex-officio or under Rule 26 PCT, or otherwise rectified under Rule 91.1(b)(ii) to (iv) PCT, as the case may be.
7. If the EPO as ISA finds that, in spite of the statement referred to in para- graph (4), the sequence listing in electro- nic form furnished under Rule 13ter PCT is not identical to the sequence listing contained in the international application under Rule 5.2(a) PCT, it will indicate that finding in the international search report and either proceed with the inter- national search if the (minor) error may be corrected or rectified under para- graph 6, above, or otherwise proceed under paragraph 5, above, as if the sequence listing in electronic form had not been furnished under Rule 13ter PCT.
8. If a sequence listing in electronic form is found to be deficient within the meaning of Article 3(1) or (2) of the decision of the President, the applicant will be invited to submit a replacement
copy within the applicable time limit under Article 4(2) of the decision of the President or, if such invitation has already been made, within the time left within the time limit fixed in that invitation (see paragraph 5, above).
9. If the international search report has not been drawn up in full or in part (see paragraph 5, above), the EPO as IPEA does not perform the international preliminary examination if a meaningful examination cannot be carried out (Rule 66.1(e) PCT). The applicant is informed accordingly and an entry is made in the international preliminary examination report (Rules 66.2(a)(vii) and 70.12(iv) PCT). In such case, an invitation to furnish a sequence listing is not issued. 7
7 Applicants are strongly advised to file sequence listings in electronic form complying with Annex C at an earlier stage, possibly already at the time of filing the international application with the receiving Office, or other- wise subsequently with the ISA under Rule 13ter.1 PCT. In the case of voluminous sequence listings at least, the EPO as IPEA will not be in a position to establish whether the sequence listing goes beyond the content of the international application as disclosed at the time of filing, although under Article 34(2)(b) and Rule 66.2(a)(iv) PCT it is obliged to carry out such an examination. In contrast to the situation with the international search, a state- ment from the applicant to the effect that the subsequently furnished sequence listing does not go beyond the content of the international application as filed cannot release the EPO from its obligation to carry out the international preliminary examination taking due account of the provisions of Article 34(2)(b) and Rule 66.2(a) PCT whereby any amendments filed must not go beyond the disclosure in the application as filed. However, there is at present no appropriate and acceptably economical means of satisfactorily comparing the documents as originally filed with the subsequently filed sequence listing. The inter- national preliminary examination report will therefore not be established on the basis of the subsequently furnished sequence listing but only on the basis of the sequences available in the description on the date of filing. This will be mentioned in the international preliminary examination report.
10. If, after receipt of the documents specified in Rule 45bis.4(e)(i) to (iv) PCT, the EPO as SISA finds that a sequence listing in electronic form complying with Annex C is not available to it, it will proceed under paragraph 2 and any other relevant paragraph of this Notice. The EPO as SISA will start the supple- mentary international search in accord- ance with Rule 45bis.5(a) PCT only if a sequence listing in electronic form complying with Annex C is available to it, that is if it is furnished to WIPO under Rule 45bis.1(c)(ii) PCT and thereafter transmitted to it under Rule 45bis.4(e)(iii) (Agreement between the EPO and WIPO, Annex E, paragraph (4) 8).
11. Where applicable, other provisions of this Notice including, but not limited to, points I.1.2 and I.3.3, apply mutatis mutandis. In particular, the EPO acting as ISA, SISA or IPEA will invite the appli- cant to furnish to it a sequence listing under Rule 13ter.1(a) PCT if any prior art sequence adequately identified in the application as filed by its database accession number, and either the version number or the database release number, is necessary for the purposes of the international search."
The decision of the President dated 26 March 2010 concerning the furnishing of sequence listings to the EPO acting as international authority under the PCT and the present Notice apply to all inter- national applications filed on or after 1 July 2010, and to pending applications provided that no invitation under Rule 13ter PCT was issued before that date.
8 See OJ EPO 2010, 315.
Date retrieved: May 20, 2014