Filing of Sequence Listings on EFS-Web Version 1.1

By Chris Singer, PhD

With the release of EFS-Web 1.1 on October 14, 2006, the USPTO has streamlined the filing of sequence listings for practitioners and patentees. The prior version of EFS-Web was limited because it allowed submission of files in .pdf format only and was not enabled to handle sequence listings, which are typically written as text files (.txt). The latest version of EFS-Web overcomes this limitation and allows practitioners to submit electronically files such as sequence listings, computer program listings, and mega tables. This eliminates the need to submit these types of files on supplemental electronic media (e.g., CD-R, 3.5" disk, etc.), which avoided fees relating to application size (currently $250 for large entities and $125 for small entities per 50 pages after the first 100).

According to sources at the USPTO Electronic Business Center, the requirements of Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 1.52(e), 1.821-1.825) have been relaxed for sequence listings that are filed using EFS-Web 1.1. Specifically, filers need only submit a single .txt file containing the sequence listing and an amendment that incorporates the sequence listing into the specification. Practitioners no longer need to include the compliance statement under 37 C.F.R. § 1.821(f) or the paper copy of the sequence listing (or the duplicate copies of the sequence listing on CD-R in lieu of a paper copy) when filing sequence listings using EFS-Web. However, the USPTO recommends that filers include a statement that the content of the sequence listing does not extend beyond the original disclosure (i.e., does not contain new matter), either as a separate document, or as a part of the "Applicant arguments/remarks made in an Amendment" section of a response.

For the time being, the USPTO will also accept sequence listings filed through EFS-Web 1.1 in a .pdf format; however the practice is strongly discouraged, since the USPTO must convert such .pdf files to .txt files to accommodate the sequence listing in its database. As a result, filing sequence listings in .pdf format creates the possibility that conversion could introduce errors in the sequence that could compromise its capacity to be accurately processed and searched, and could even affect sufficiency of disclosure under 35 U.S.C. § 112.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.

Comments

[Scott E. Kamholz, M.D., Ph.D.]

I have filed sequence listings through EFS-Web 1.1 in the form of .txt files. Upon filing, a one-page placeholder was added to the Image File Wrapper for the application. The sequence listing itself became accessible through PAIR a couple of weeks later.

[Fred Wearni]

Now that they completed that, when are they going to set up their online patent images so that we can print all pages of a patent rather than print one page at a time. Does anyone know why the US Patent Office has not already done this?

[An examiner]

Fred- No news on when multiple images at once will be available from the PTO. However see www.pattools.com for a nice tool that will make a PDF of a patent.

[Blaise Mouttet]

Also www.freepatentsonline.com will give you the full pdf.

[Mark Hyman]

I was given similar info by the EBC, but I'm not comfortable relying on such assurances in the absence of formal guidance. I queried OPLA about the interplay between EFS-Web 1.1 and the sequence rules several weeks ago, and was assured that an OG notice or FAQ list was being prepared. I had hoped that such a notice would have been published by now, but I suspect that the sequence issues have been delayed because of work on the IDS/CON rule packages.

[Alan McDonald]

If I remember correctly, a long time ago the PTO made a VERY bad deal with a contractor to get its patents digitized. The contractor owned the right to supply the digitized images. I believe that the PTO negotiated the right to put up the one-at-a-time images, but still does not have the right to supply full copies.

I could well be wrong on this contract still being in effect, but I do remember this being a prime example to Congress why the PTO could not be trusted to become an independent government corporation.

[crissa]

http://www.pat2pdf.org/
is another good patent pdf retrieval tool. You can retrieve multiple patents at a time.

[biotech_dave]

I agree pat2pdf is a solid site to use. Why pay Nerac for US pats?

[Chris Singer]

To Mark Hyman's point...I was at first skeptical of the information the EBC was providing about the requirements for sequence listings filed electronically. However, it seems they have been keeping this information relatively consistent, which boosts my confidence in what they instruct about the filing requirements.

I suppose time, and possibly the OG, will tell. In my opinion, prior to this EFS update, sequence listings had become burdensome to file particularly since they are not always relevant to the claimed invention. Hopefully the PTO will provide a clear statement in writing about these requirements...but until they tell me differently I'm taking them at their word.

[Chris Singer]

About PDF images of patents, I particularly like patentreader.com.

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