2422.03(a) Sequence Listings Submitted as ASCII Text Files via EFS-Web [R-10.2019]

The EFS-Web Legal Framework (www.uspto.gov/ sites/default/files/documents/2019LegalFrameworkPES.pdf ) and MPEP § 502.05 provide detailed information pertaining to filing applications and other documents via EFS-Web. The information below is specific to sequence listing submissions via EFS-Web.

Pursuant to the EFS-Web Legal Framework, applicants may submit a sequence listing under 37 CFR 1.821 as an as ASCII text file via EFS-Web instead of on compact disc, provided the specification contains a statement in a separate paragraph (preferably on the first page) that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes. The requirements of 37 CFR 1.52(e)(3) - (6) for documents submitted on compact disc are not applicable to sequence listings submitted as ASCII text files via EFS-Web. However, each text file must be in compliance with ASCII and have a file name with a ".txt" extension.

I. ASCII TEXT FILE SUBMITTED VIA EFS-WEB MAY SERVE AS BOTH PAPER COPY AND CRF

It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file. See subsection IV, below, for information regarding filing an international application (PCT) with a sequence listing text file via EFS-Web.

If a sequence listing ASCII text file submitted via EFS-Web on the application filing date complies with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e).Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identical); and (3) a request to use a compliant computer readable form of the sequence listing that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in the ASCII text file with the application via EFS-Web. See MPEP § 2422.05. Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on the USPTO website at www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker-version-446. The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.

If a user submits a sequence listing (under 37 CFR 1.821(c) and (e) ) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed. In addition, if a user submits an amendment to, or a replacement of, a sequence listing (under 37 CFR 1.821(c) and (e) ) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by: (1) a statement that the submission does not include any new matter, and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825. An incorporation-by-reference statement of the sequence listings is also required in both of these instances.

Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee. The USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as stated above, if applicant has not filed a second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c). If applicant submits a sequence listing in both a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required. In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e) and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application. See MPEP § 2422.05.

II. APPLICATION SIZE FEE

Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 37 CFR 1.824(a)(2)-(6) and (b) will be excluded when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1). A sequence listing submitted as a PDF file via EFS-Web will not be excluded when determining the application size fee.

Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s) or 1.492(j). Each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein.

See subsection IV, below, for additional information regarding application size fees in an international application (PCT).

III. SIZE LIMIT FOR TEXT FILES

One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. If a user wishes to submit an electronic copy of a sequence listing text file that exceeds 100 megabytes, it is recommended that the user file the application without the sequence listing using EFS-Web to obtain the application number and confirmation number, and then file the sequence listing on compact disc in accordance with 37 CFR 1.52(e) on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the application. Note: a submission of a sequence listing in electronic form of 300 MB or more in size is subject to the fee set forth in 37 CFR 1.21(o). Alternatively, a user may submit the application on paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e). Sequence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web system is not currently capable of handling such submissions. If the sequence listing is filed on a compact disc, the sequence listing must be a single document, but the document may be split for submission on multiple physical media using software designed to divide a file into multiple files for subsequent concatenation. If the user breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X").

See subsection IV.B, below, for information regarding submission of a sequence listing text file that exceeds 100 megabytes in an international application (PCT) filed via EFS-Web.

For all other file types, 25 megabytes is the size limit. If a user wishes to submit a table that is larger than 25 megabytes, it is recommended that the electronic copy be submitted on compact disc via Priority Mail Express® from the USPS in accordance with 37 CFR 1.52(f)(1) on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the electronic copy to be considered to be part of the application as filed. Alternatively, the user may submit the application in paper and include the electronic copies on compact disc in accordance with 37 CFR 1.52(e). Another alternative would be for the user to break up a computer program listing or table file that is larger than 25 megabytes into multiple files that are no larger than 25 megabytes each and submit those smaller files via EFS-Web. If the user chooses to break up a table file so that it may be submitted electronically, the file names must indicate their order (e.g., "1 of X", "2 of X").

See subsection IV.C, below, for information regarding submission of tables in an international application (PCT) filed via EFS-Web.

IV. FILING SEQUENCE LISTINGS IN INTERNATIONAL APPLICATIONS (PCT) VIA EFS-WEB

A. Sequence Listing Must Be Presented as a Separate Part of the Application

Under PCT Rule 5.2(a), the sequence listing must always be presented as a separate part of the description. When filing an international application (PCT) using EFS-Web, the sequence listing part of the description may be submitted either as a single ASCII text file with a ".txt" extension (e.g., "seqlist.txt") or as a PDF file. Note that 100 megabytes is the size limit for submitting a sequence listing text file via EFS-Web. See subsection IV.B, below.

If the sequence listing is submitted as an ASCII text file, applicant need not and should not submit any additional copies. The single ASCII text file is preferred because the ASCII text file will serve both as the sequence listing part of the description under PCT Rule 5.2 and the electronic form under PCT Rule 13ter.1(a) in the absence of a PDF sequence listing file. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) must indicate that the sequence listing forms part of the international application. Furthermore, the statement as set forth in paragraph 4(v) of the AI Annex C (Administrative Instructions under the PCT, Annex C), that "the information recorded in electronic form furnished under PCT Rule 13ter is identical to the sequence listing as contained in the international application," is not required. Also, the sequence listing in an ASCII text file will not be taken into account when calculating the application sheet count, i.e., no excess sheet fee will be required for the sequence listing text file.

Submission of the sequence listing part of the description in a PDF file is not recommended because the applicant would also be required to supply a copy of the sequence listing in an ASCII text file to the appropriate authority for purposes of international search and/or international preliminary examination in accordance with paragraph 40 of AI Annex C. When a sequence listing is filed via EFS-Web in a new PCT international application in both a PDF file and an ASCII text file, but the Request form Box No. IX does not indicate which one forms part of the international application, the PDF copy of the sequence listing will be considered to form part of the application and the ASCII text file will be considered an accompanying item for search purposes under PCT Rule 13ter.1(a) only.

The calculation of the international filing fee for an international application (PCT), including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the international application (PCT). A sequence listing filed in a PDF file will be included in the sheet count of the international application (PCT). Therefore, the sheet count for an EFS-Web filed international application (PCT) containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.

B. File Size and Quantity Limits

One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. Sequence listing text files must not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions. For all other file types EFS-Web is currently not capable of accepting files that are larger than 25 megabytes. Additionally, a single EFS-Web submission may include no more than 60 electronic files. Note that regarding the 60 electronic file limit, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file.

The need to submit unusually large sequence listings and/or numerous electronic files may prevent applicant from making a complete international application (PCT) filing in a single EFS-Web submission. Applicant may use EFS-Web to file part of the international application (PCT) and to obtain the international application (PCT) number and the confirmation number, and then file the remainder of the international application (PCT) on the same day as one or more follow-on submissions using EFS-Web, in order to secure the same filing date for all parts of the international application (PCT). However, applicant is not permitted to file part of the international application (PCT) electronically via EFS-Web, and then file the remainder of the international application (PCT) on paper to secure a filing date of all parts of the international application (PCT).

In the situation where applicant needs to file a sequence listing that is over one hundred (100) megabytes, applicant may use EFS-Web to file the international application (PCT) without the sequence listing to obtain the international application (PCT) number and the confirmation number, and then file the sequence listing on compact discs on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the international application (PCT). However, Priority Mail Express ® from the USPS and hand-carried submissions must not contain PDF files and must fully comply with the guidelines for filing a sequence listing on electronic media. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) must indicate that the sequence listing part of the description will be filed separately on physical data carrier(s), on the same day and in the form of an Annex C/ST.25 text file. The sequence listing must be a single document, but the document may be split for submission on multiple physical media using software designed to divide a file into multiple files for subsequent concatenation. If the user breaks up a sequence listing for submission on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X").

Submissions of very lengthy sequence listings (300 MB or over) in international applications are not subject to the mega-sequence listing submission fees set forth in 37 CFR 1.21(o). However, for mega-sequence listing submissions on or after January 16, 2018, the fee under 37 CFR 1.21(o) does apply to the submission of mega-sequence listings received in national stage applications under 35 U.S.C. 371, including mega-sequence listings received by the Office pursuant to PCT Article 20. Similarly, if an international application is filed at RO/US with a mega-sequence listing, and thereafter a bypass continuing application is filed under 35 U.S.C. 111(a), the fee under 37 CFR 1.21(o) will be due in the continuing application for mega-sequence listing submissions on or after January 16, 2018.

C. Tables Related to a Sequence Listing

Tables related to a sequence listing must be an integral part of the description of the international application (PCT), and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT). For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 2009). If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT).