2422.05 Request for Transfer of Computer Readable Form [R-10.2019]
37 C.F.R. 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
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- (e) A copy of the "Sequence Listing" referred to in paragraph (c) of this section must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the "Sequence Listing" and may not be retained as a part of the patent application file. If the computer readable form of a new application is to be identical with the computer readable form of another application of the applicant on file in the Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of this subpart. The new application must be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable "Sequence Listing" that is already on file for the other application and must state that the paper or compact disc copy of the "Sequence Listing" in the new application is identical to the computer readable copy filed for the other application.
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Where the computer readable form (CRF) of the sequence listing of a new application is to be identical with the CRF of another application of the applicant on file in the Office, 37 CFR 1.821(e) provides a mechanism for applicant to request a transfer of the CRF from the application already on file to the new application in limited circumstances. Instead of submitting a transfer request of a previously filed CRF, however, the Office strongly recommends that applicant submit a sequence listing in ASCII text format in the new application, which will serve both as the sequence listing part of the disclosure, as well as the CRF. Applicant may be able to retrieve a copy of the sequence listing in ASCII text format in another application of the applicant from applicant's records, public or private PAIR via the Supplemental Content Tab, or from PATENTSCOPE (WIPO website) when provided in an international application.
I. REQUIREMENTS OF A TRANSFER REQUEST
First, the application in which the request for a transfer is submitted must have been filed with (or include via an amendment in accordance with 37 CFR 1.825(a) ) a paper copy, two compact disc copies in accordance with 37 CFR 1.52(e), or a PDF of a sequence listing. Second, the CRF of the previous application must be identical to the sequence listing contained in the new application and the request for transfer must include a statement to this effect. Note that applicant may request transfer only of a CRF that complies with 37 CFR 1.824(a)(2) - (6) and 37 CFR 1.824(b), (i.e., is a compliant sequence listing ASCII text file). Third, the previous application and the CRF to be transferred must be completely and clearly identified in the transfer request. Necessary identifying information includes the application number, filing date of the application, and submission date of the CRF that is to be transferred. Note that if the transfer request is filed on or after January 16, 2018 and the sequence listing to be transferred is at least 300 MB, then the transfer request will be subject to the mega-sequence listing fee set forth in 37 CFR 1.21(o).
Form PTO/SB/93 (www.uspto.gov/forms/ sb0093.pdf ) should be used to request a transfer of a CRF under 37 CFR 1.821(e) to facilitate processing of the request.
If a user submits a sequence listing ASCII text file via EFS-Web and concurrently requests the Office to use a compliant computer readable sequence listing that is already on file for another application pursuant to 37 CFR 1.821(e), the Office will not carry out the request but will use the sequence listing submitted with the application as originally filed via EFS-Web.
II. REPLY TO A DEFECTIVE TRANSFER REQUEST NOTICE
Applicant's reply to a notice of a defective transfer request preferably includes a CRF of the previous application (an ASCII text file submitted via EFS-Web or on compact disc), however a new transfer request and correction of the noted deficiencies is also permitted. As an example, if applicant requested transfer of a CRF into a new application that does not include a sequence listing and such request is defective, the response to a defective transfer request notice may be a CRF of the sequence listing. If it is not, then the response must include a new transfer request, a PDF, two compact disc copies in accordance with 37 CFR 1.52(e) or a paper copy of the sequence listing, and an amendment in accordance with 37 CFR 1.825(a) entering the sequence listing in the application.