ST.26 Sequence Listings practice of the EPO and new safeguards in transition for divisionals

13 October 2023

Back in July, we gave an overview on unraveling the challenges of WIPO ST.26 Sequence listings, reporting on the legal risks, extra effort, and increased costs surrounding the implementation of the new WIPO Standard ST.26 for Sequence listings in force since 1 July 2022 for biotech patents filed at the European Patent Office (EPO).

Our article delved into the worries faced by applicants, representatives, and paralegals, and proposes solutions to navigate.

These concerns were also raised by epi, the European Patent Institute for Professional Representatives to the EPO and deeply dive into the manner of implementation of the WIPO Standard ST.26, in particular concerning the treatment of sequence listings in divisional European patent applications containing sequence listings.

On 28 September, epi received a letter from Mr Ernst Vice-President DG5 at the EPO, in response to these concerns raised by epi. We are happy to report that the EPO has taken our concerns relating to the potential conversion errors from an ST.25 to an ST.26 Sequence listing serious and the associated risks of added or lost subject-matter. The EPO promised now it will change its practice soon. Mr Ernst explains the steps the EPO will take to implement further safeguards and steps in the transitional regime for divisional patent applications with sequence listings.

What the EPO proposes amounts to:

Allowing applicants in the case of a divisional patent application, to file the ST.25 Sequence listing of the parent application in PDF format and subsequently filing the Sequence listing in the ST.26 Sequence listing format to avoid any loss of rights,
Waiving any additional page fees which may be due to the filing of the ST.25 Sequence listing of the parent for this purpose, and,
Similarly, in cases where the divisional is filed by reference to the parent application, the EPO will not charge any additional page fees for an ST.25 Sequence listing contained in the certified copy under R. 40(3) EPC.

Users will be informed of this change in practice in a notice from the EPO to be published in the Official Journal 11/2023. Also, the Guidelines for Examination and the FAQs on Sequence Listings published on the EPO website will be updated soon.

Unfortunately, the EPO up till now has been rather negative in allowing the further requests made by the epi which will lead to further discussions on these matters in the epi Biotech circles.

So, the saga and discussion will continue. We will shed more light into the matter when the notice is published.

In the meantime, we encourage you to reach out to us on info@dcp-ip.com if you have any questions or concerns about how this will affect the handling of your current or future patent applications. Our DCP team is ready to assist you!