1848    Sequence Listings [R-10.2019]

PCT Rule 13ter

Nucleotide and/or Amino Acid Sequence Listings

13ter.1  Procedure Before the International Searching Authority

  • (a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation.
  • (b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
  • (c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
  • (d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
  • (e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34(2)(b).
  • (f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite the applicant to submit the required correction. Rule 26.4  shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.

13ter.2 Procedure before the International Preliminary Examining Authority

Rule 13ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.

13 ter.3 Sequence Listing for Designated Office

No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.

PCT Administrative Instructions Section 513

Sequence Listings

  • (a) Where the International Searching Authority receives a correction of a defect under Rule 13ter.1(f), it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words "SUBSTITUTE SHEET (Rule 13ter.1(f) )" or their equivalent in the language of publication of the international application;
    • (iii) indelibly mark on the letter containing the correction, or accompanying any replacement sheet, the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the correction or, when the correction is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
    • (v) promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the receiving Office.
  • (b) Where the international search report and the written opinion of the International Searching Authority are based on a sequence listing that was not contained in the international application as filed but was furnished subsequently to the International Searching Authority, the international search report and the written opinion of the International Searching Authority shall so indicate.
  • (c) Where a meaningful international search cannot be carried out and a meaningful written opinion, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, cannot be established because a sequence listing is not available to the International Searching Authority in the required form, that Authority shall so state in the international search report or declaration referred to in Article 17(2)(a), and in the written opinion.
  • (d) The International Searching Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international search, the words "SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION" or their equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
  • (e) The International Searching Authority shall:
    • (i) keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international search; and
    • (ii) where the sequence listing which does not form part of the international application but was furnished for the purposes of the international search is in electronic form, transmit one copy thereof to the International Bureau together with the copy of the international search report. If that listing in electronic form is filed on a physical medium in less than the number of copies required by the International Searching Authority, that Authority shall be responsible for the preparation of the additional copy and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
  • (f) Any International Searching Authority which requires, for the purposes of the international search, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.

Where an international application contains disclosure of a nucleotide and/or amino acid sequence, the description must contain a listing of the sequence complying with the standard specified in Annex C of the Administrative Instructions. See MPEP § 1823.02. If the International Searching Authority finds that an international application contains such a disclosure but that the description does not include such a listing or that the listing included does not comply with that standard, the International Searching Authority may invite the applicant to furnish a listing complying with that standard and to pay a late furnishing fee.

If the International Searching Authority finds that a sequence listing is not in an electronic form (text) provided for in the Administrative Instructions, it may invite the applicant to furnish a listing to it in such a form and to pay a late furnishing fee.

An invitation from the International Searching Authority to furnish a sequence listing complying with the standard specified in the Administrative Instructions, and to pay a late furnishing fee, will specify a time limit for complying with the invitation. Any sequence listing furnished by the applicant in response to the invitation must be accompanied by a statement to the effect that the listing does not include matter which goes beyond the disclosure in the international application as filed. If the applicant does not furnish the required sequence listing and pay any required late furnishing fee within the time limit specified in the invitation, the search undertaken by the International Searching Authority may be limited.

If the applicant wishes to include such a listing in the text of the description itself, appropriate amendments may be made later under PCT Article 34, provided that the applicant files a Demand for international preliminary examination.