Sequence listings and WIPO ST.26 – briefing update

Following on from my earlier article on nucleotide and amino acid sequence listings and ST.26, we were promised a ‘big bang’ on 1 July 2022 when WIPO Standard ST.26 entered into force. WIPO even provided new software to replace the well-known PatentIn software, WIPO Sequence. However, WIPO has already issued a few software updates, with version 2.1.2 of WIPO Sequence released on 3 August 2022. WIPO also recently issued a communication about further ‘technical issues’ with the WIPO sequence software, though version 2.1.2 should resolve some of these ‘bugs’. Therefore, it is always imperative to check that the updated version of WIPO sequence is used to generate sequence listings and to visit the ‘Knowledge Base’ site of the WIPO Sequence Suite for updates.

Divergence in practice — divisional applications

Whilst ST.25 will remain effective for patent applications with a filing date prior to 1 July 2022, the issue of divisional applications filed after 1 July 2022 is a matter of national law and we are now seeing some divergence in practice between offices.

In the UK, following proactive user consultation, the UKIPO recently confirmed that ST.26 will not apply to divisional applications where the parent application was filed prior to 1 July 2022 (and therefore with a ST.25 sequence listing).

Due to the hard-line approach of the EPO on this matter, the EPI Biotech Committee recently submitted a paper to the EPO that outlines concerns with new WIPO Standard ST.26. This has a particular focus on divisional applications and the issue of added subject-matter when converting a ST.25 sequence listing to a ST.26 sequence listing. The EPO’s response confirmed that its approach to divisional patent applications will not change and mentions that this is in-line with the USA, Japan, Germany, Denmark and Norway. It also states that an applicant may simply file a sequence listing in PDF format — while this might be feasible for a short sequence listing, a lengthy sequence listing could add significant excess page fees to a new divisional application filing. Furthermore, with respect to the second ‘solution’ proposed, it would be unusual practice to file a divisional application with reference to the description of the parent application only, as typically both description and claim amendments will be required. With this in mind, the EPO’s proposed solutions are not so straightforward to apply in practice. It is interesting to note that the EPO intends to carry out a post-implementation review in 2023, so it is important for users to provide the EPO with feedback in general and specifically related to ST.25 to ST.26 conversion.

As WIPO has confirmed that divisional applications are treated under national law, various jurisdictions have modified their approach, either allowing an ST.25 sequence listing to be used (as per the UKIPO) or setting an official term to file a ST.26 compliant sequence listing when an ST.25 sequence listing is filed with the divisional application. While it seems that practice in each jurisdiction is likely to evolve, it would be more pragmatic for users to see some consistency in approach between offices.

Take-home advice — divisional applications

This divergence in practice between offices/jurisdictions highlights the need for clients/applicants to provide instructions in good time to allow for the potential conversion of a ST.25 sequence listing to a ST.26 sequence listing prior to filing a divisional application.

31: Do sequence listings need to be filed again when a divisional application is made?

This is a matter of national law. However taking into account the spirit of an effective transition to WIPO ST.26, it is recommended that the divisional sequence listing be filed in WIPO ST.26 format, on or after July 1, 2022, if a parent application has a sequence listing provided in WIPO ST.25 format.

As this is a decision for the Office, some may decide applicants to be allowed to “carry over” the sequence listing from the parent application to the divisional or request that applicants file a new sequence listing that is WIPO ST.26 compliant. Offices should consider their practice when carrying out their WIPO ST.26 implementation plan during 2021.

This article was originally published on 4 August 2022 and updated on 10 August 2022.