Weekly Patent Update – Dec 2021 (3 of 3)

“CIPA welcomes the announcement of a landmark trade deal with Australia and its intellectual property (IP) provisions which will support the UK economy by encouraging innovation and creativity.

We are pleased to see the commitment to protect UK brands and trade marks through a commitment to an equitable and correspondent approach to Geographical Indications (GIs). GIs are IP rights for products with qualities or characteristics attributable to a specific geographical origin. If Australia introduces bespoke GI schemes for spirits and agri-foods, the UK will be able to put forward GIs for potential protection subject to Australia’s legal procedures.

The Government has said that it will respect the UK’s important, existing international obligations on intellectual property in its trade negotiations and the agreement with Australia is fully in line with this commitment. We look forward to participating in the detailed review of the agreement.

CIPA fully supports the Government’s global trade ambitions and looks forward to future trade announcements which will further strengthen the UK’s position as a world leader in IP.”

“On 26 November 2021, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) presented to the public the draft amendments to the Rules and Regulations Governing Inter Partes Proceedings (Inter Partes Rules).  IP Law practitioners from various law firms attended the public consultation.

The strategic measure is in line with Director General Rowel S. Barba’s BRIGHT agenda, particularly, “Raising the ante for customer service” and “Transforming IPOPHL into a full digitalized agency”. The draft amendments will modernize and further streamline the procedures in oppositions (to trademark registration) and petitions for cancellation of patents and registrations of utility model, industrial design and trademark. The measures implemented by the BLA since last year to ensure the continuity of operations, access to and delivery of services during the Covid-19 pandemic are incorporated including e-Filing, e-SOA and online payment of fees, the conduct of online or virtual hearings and conferences, and e-Service of notices, interlocutory orders, decisions and final orders.

Making it easier for parties to comply with the requirements in filing oppositions, petitions, and answers [to the opposition or petition] is also one of the objectives of the amendments. Streamlining includes rationalizing the number of and the timelines for extensions to file pleadings and other compliances.

The BLA aims to implement the amendments in June 2022, thus giving law firms and IP practitioners ample time to get familiar with the changes in the rules.  The draft amendment to the Inter Partes Rules is still posted in the IPOPHL website. Those who are interested to submit comments or suggestions have until 31 December 2021 to do so through email address:  vanj.dapon@ipophil.gov.ph“

“A new version (version 4.9) of ePCT for applicants was released on 6 December 2021. The main new features include:

– a new ePCT landing page (https://pct.wipo.int) containing an overview of the main features available in the ePCT system for applicants and IP Offices, in addition to tips on how to get started for new users of the system;

– new ePCT video tutorials (as mentioned above);

– method of sending PCT Forms: as the International Bureau (IB) (including the IB as receiving Office (RO/IB)) is continuing its current policy of not sending Forms in paper format, the options in the ePCT interface to select “paper” or “paper and e-mail” have been removed from the “Names” section that is completed when filing, as well as from the PCT Rule 92bis Action, the Chapter II Demand Action and the Address Book;

– filing with the RO/IB: it can be quite complex to determine whether an agent has the right to act before RO/IB based on the nationality and residence of the applicants, as per Annex C of the PCT Applicant’s Guide. Therefore, to reduce the likelihood of ex officio corrections or invitations to correct after filing, additional validations have been introduced in ePCT-Filing: if the user does not confirm in the interface the right of the agent to represent the applicants before RO/IB, the status of “agent” will be automatically changed to “address for correspondence” when the draft is saved and any signature or power of attorney related to the agent will be automatically deleted;

– reminder about the 2017 PCT Assembly Understanding: in cases where a 90% reduction of the international filing fee is calculated, a validation has been added to remind users about the importance of including all the applicants on the request form at the time of filing, as per the 2017 PCT Assembly Understanding (available at: https://www.wipo.int/pct/en/fees/2017_fee.html);

– priority claims: the checkbox to request restoration of the right of priority is displayed only if ePCT detects that the filing date of the earlier application is outside the 12-month priority period but within the two months that follow the expiration of that period. Furthermore, if the application does fall within the above-mentioned period, but the selected receiving Office does not accept requests for restoration of priority, the ePCT validation will advise the applicant to change the receiving Office to RO/IB but will no longer prevent filing;

– full-text version of the International Search Report (ISR)/Declaration under PCT Article 17.2(a)/Written Opinion of the ISA (WOSA) for published applications: If an XML version of the ISR/Declaration under PCT Article 17.2(a) and/or the WOSA is available in addition to the PDF version in the Documents list, a shortcut link to the XML version is displayed in the bibliographic data header section, in addition to being available under “More” in the Documents list;

– Address Book – multilingual entries: it is possible to maintain contact details in both non-Latin publication languages and the equivalent transliteration in English; and

– ePCT Action Chapter II Demand: an additional validation has been added to ensure that the language of publication is indicated as the language for international preliminary examination if that language is accepted by the selected IPEA.

For further details on these changes and for information on other new features, please refer to “What’s new in ePCT for applicants” at: https://pct.eservices.wipo.int/direct.aspx?T=EN&UG=4&N=1611

You may also wish to take part in one of our ePCT webinars: “What’s new for applicants in ePCT 4.9” on 11 and 13 January 2022. The webinars will guide you through the new features that have been implemented. For further details, including registration details, please refer to the PCT Webinars page at: https://www.wipo.int/pct/en/seminar/webinars/index.html

A recording will be made available afterwards on the PCT Webinars page.”

“The Intellectual Property Office, Office of the Attorney General and Ministry of Legal Affairs (Trinidad and Tobago) in its capacity as receiving Office has notified the International Bureau under PCT Rule 89bis.1(d) that, with effect from 31 January 2022, it will be prepared to receive and process international applications in electronic form which have been filed using ePCT-Filing. The applicable electronic filing fee reductions listed in item 4 of the Schedule of Fees are indicated in Fee Table I(a).

The notification containing the requirements and practices of the above-mentioned Office with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 25 November 2021 at: https://www.wipo.int/pct/en/official_notices/index.html”

“The Request Form (PCT/RO/101), the Supplementary Search Request (PCT/IB/375) and the Demand Form (PCT/IPEA/401) have been modified, with effect from 1 January 2022, to make e-mail the default option for applicants to receive notifications from Offices that provide such a service. The option to receive notifications by postal mail will remain, but will become the exception to the default. Please note that receipt by postal mail and also by e-mail will no longer be an option.

For further information, please refer to Circulars C. PCT 1623 and 1631 at: https://www.wipo.int/pct/en/circulars/ The revised forms, which can be used as from 1 January 2022, are available at: https://www.wipo.int/pct/en/forms/index.html”

“For the purposes of computing time limits under PCT Rule 80.5, the days on which the International Bureau (IB) will not be open for business, for the period from 1 January to 31 December 2022, are the following:

All Saturdays and Sundays, and 3 January 2022

15 April 2022

18 April 2022

26 May 2022

6 June 2022

8 September 2022

26 December 2022

30 December 2022

Note that the days indicated above concern only the IB and not national or regional Offices in their PCT roles. The closed dates in 2022 for other Offices, where this information has been provided to the IB, can be found on the PCT website at: https://www.wipo.int/pct/dc/closeddates/faces/page/index.xhtml”

“The e-mail of the Department of Intellectual Property (DIP) (Thailand) has changed, as follows:

E-mail: ro-th-pct@ipthailand.go.th”

“In accordance with PCT Rule 82quater.2(a) concerning the excuse of delay in meeting certain time limits due to the unavailability of electronic means of communication at an Office or organization, the European Patent Office (EPO) has notified the International Bureau of the unavailability of the following online services on 29 November 2021, from 03:13 to 08:35 (Central European Time):

– Online Filing;

– Online Filing 2.0;

– Web Form Filing;

– Online Fee Payment;

– Mailbox and MyFiles;

– Espacenet;

– Open Patent Services (OPS); and

– the European Patent Register.

Applicants who did not meet a PCT time limit due to the unavailability of any of the above-mentioned services during the indicated period may request excuse of delay in meeting that time limit under PCT Rule 82quater.2, in accordance with the applicable conditions published in the Official Notices (PCT Gazette) of 26 November 2020, page 254, at:

https://www.wipo.int/pct/en/official_notices/officialnotices20.pdf#page=254

Information on the outage has been published on the EPO website at:

https://www.epo.org/service-support/availability-of-online-services.html“

“The United States Patent and Trademark Office (USPTO) is in the process of developing artificial intelligence (AI) capabilities to add to the tool that patent examiners use for conducting prior art searches. When an examiner uses these AI capabilities in a prior art search, a notation that a search using AI capabilities was conducted will be documented in the search record.

You can find more information in the Official Gazette Notice available on the USPTO’s Patent Related Notices webpage.”

“Availability of our Information Centre and our filing services over the festive season.

Christmas

Our Information Centre will be closed on Friday 24 December until 9am on Tuesday 29 December 2021. You should not rely on other direct line numbers being answered during this period.

Any forms or documents filed during this period will receive their legally acknowledged filing date, but may not be processed until the next working day. Please continue to file through our website, by post or e-mail forms@ipo.gov.uk.

New Year

Our Information Centre will be closed on Friday 31 December 2021 until 9am on Tuesday 4 January 2022. You should not rely on other direct line numbers being answered during this period.

Any forms or documents filed during this period will receive their legally acknowledged filing date, but may not be processed until the next working day. Please continue to file through our website, by post or e-mail forms@ipo.gov.uk.”

“The Controller has approved two new practice notes in relation to Patents, on the subjects of Evidence of Novelty and the Consistory Clauses. Both of which are available on our Patents Practice and Procedures page at the following link Patents Practice and Procedures – IPOI”

“The Copyright Act, perplexing to many, is a series of statutes that are closely related to people’s daily lives. Rapid development in society and Internet technology has led to increasingly diverse and complicated copyright issues in people’s everyday lives and work. TIPO has thus compiled the Copyright FAQ e-Manual by collecting common copyright issues-related public e-mail inquiries in the past three years. Through the detailed explanations of twelve FAQs, the general public can gain a deeper understanding of the Copyright Act, so as to foster respect and ensure protection for intellectual property rights.

This Manual has been published on the TIPO website for public reference.”

“Since January 1, 2021, TIPO has been implementing the “Positive Patent Examination Pilot Program for Startups” to offer assistance in evaluating patent acquisition probability and provide advice on ways to promptly obtain patent rights. Upon receiving positive responses to the results of the pilot program, TIPO has decided to amend and conduct it for an additional year. Moreover, during the pilot program of 2022, there is a cap of 6 applications each month and a limit of 5 applications per startup per year.”

“TIPO has referred to the examination guidelines of the EUIPO, JPO, the USPTO, and the judicial practice of Taiwan and revised the Examination Criteria on Likelihood of Confusion, aiming to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. It was promulgated and put into effect on October 27, 2021.

The key points of the revision are as follows:

1. Regarding the Similarity of Goods and Services

The revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.

2. Regarding the Similarity of Goods and Services:

An additional criterion, “channels of distribution or points of sale,” was included in the list of determining factors for the degree of similarities between goods and services. Definitions of goods/services that are considered in competition, complementary, or auxiliary/ancillary in relation to specific other goods or services, and supplemental information pertaining to the relations between the goods and their components, raw materials, or semi-finished products, respectively, were also incorporated into the revision. Examples and applicable situations of abovementioned factors were enumerated.

3. Other Minor Changes:

Several determining factors were modified, such as whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, whether the trademark applicant possesses a bona fide intent, and the qualifying factors for being “obviously improper,” part of the proviso of Subparagraph 10, Paragraph 1, Article 30 of the Trademark Act.”

“New changes have been made on IP protection over the past year, with the infrastructure redesigned at the very top, more concrete rules to follow for law enforcement, whole-chain of protection improved, systematic reform deepened, international cooperation and competition advanced and national security issues in the IP filed addressed, according to the fourth-quarter press conference of the China National Intellectual Property Administration (CNIPA) on December 8, which paints a panoramic picture of CNIPA’s efforts in transforming China from a major IPR importer into a major IPR creator, from pursuing IPR quantity to improving quality?hereinafter referred as the Two Transformations).

Comprehensively strengthening IP protection

“CNIPA has been beefing up IP protection since the end of 2020, which vigorously speeds up the materialization of the Two Transformations,” said Hu Wenhui, Deputy Commissioner of CNIPA’s Patent Office and Director General of CNIPA’s General Affairs Office.

Specific measures have been taken this year to heighten IP protection in an all-round and multi-tiered way, providing strong support for the rapid progress of the Two Transformations. The Outline for Building a Country Strong on IPR (2021-2035) and the 14th Five-Year National Plan for IP Protection and Application were completed and issued. The newly revised patent law was implemented and the framework and contents of the geographical indication law were drafted to further construct a comprehensive protection work system. Six aspects including 16 measures were made to deepen the reform in streamlining administration, delegating power, improving regulation, and upgrading services. Special campaigns were carried out to crack down on irregular patent applications and malicious trademark registrations. Decisive progress was made in advancing China’s accession to the Hague Agreement Concerning the International Registration of Industrial Designs. The China-EU GI agreement was effectively implemented. The independent research and protection of core technologies related to national security were enhanced.

Notable results were achieved in multiple areas. For example, with  harsh actions on irregular patent applications and malicious squatting of trademarks as an example, CNIPA, since 2021, has notified local authorities of 4 groups of 815,000 patent applications assessed as irregular, and revoked 93.1% of all applications of the first three groups; sanctioned 376,000 malicious trademark registration applications. In order to severely crack down on irregular applications from unlicensed patent agencies, CNIPA also issued the Notice on Facilitating “Blue Sky” Special Rectification Actions to direct local authorities to punish nearly 200 unlicensed agencies across the country, having imposed combined fines exceeding 10 million yuan.

Starting a new journey of high-quality development

As of date, China is experiencing the Two Transformations. New breakthroughs in IP field have made remarkable contributions to the country’s high-quality development, according to the press conference.

“China’s export and import volume of IP royalties approached 280 billion yuan in the first three quarters, with the export growth rate spiking at over 27%. In addition, China’s ranking rose to No.12 in WIPO’s (World Intellectual Property Organization) the Global Innovation Index Report 2021 issued, hitting a new high. Besides, from January to October, the national patent and trademark pledge financing amounted to 240.77 billion yuan with a year-on-year increase of 50.6%, surpassing the total amount of last year, ” said Lei Xiaoyun, Director General of CNIPA’s IP Utilization and Promotion Department. “The above data clearly defines the progress in advancing the Two Transformations in the outgoing year. ”

IP protection has been continuously strengthened, deepened and refined centering on the theme of high-quality development. Zhang Zhicheng, Director General of CNIPA’s IP Protection Department, introduced that CNIPA has taken actions in four aspects to enhance the high-quality development of IP administration at the national level. Among them, CNIPA accelerated the building of the index, policy, statistical and assessment systems for  high-quality development by constructing a patent quality improvement project, a trademark branding strategy and GI protection demonstration zones as well as a national GIs application promotion project. Also, the “high-value invention patents owned by per 10,000 heads” aim was listed as one projected target of the Plan.

In addition, both the CNIPA and the local administrations all chip in to build an IP public service system that can facilitate access  to resources and benefit the people, help all branches of the industrial economy operate stably and sustain the high-quality economic and social development. According to Wang Peizhang, Director General of CNIPA’s IP Public Service Department, the national IP public service system has taken an initial shape under the full coverage of IP information public service centers in provinces (regions, municipalities) and vice-provincial cities, and cities separately designated. The coverage of prefecture-level comprehensive public service centers increased to 33%. Also, in cooperation with the WIPO, CNIPA has deployed 101 Technology and Innovation Support Centers (TISCs), having established presence in all provinces. The first group of registered national public service stations amounted to 88 and crucial service stations nationwide reached 269.

“CNIPA will treat quality as the main theme and must-do task of the IP development in the new era based on the active coordination, simultaneous multi-level efforts and coordinated advancement of the entire chain to forge a new path for high-quality development and create a new situation of building a country strong in IPRs,” said Zhang.”

“The President of the European Patent Office, having regard to Rules 74, 87 and 96 EPC, has decided as follows:

Article 1

Form and means of communication of the certificate for a European patent

(1) The certificate issued for a European patent as granted or amended or limited will be communicated to the proprietor.

(2) Proprietors or representatives with an activated Mailbox will receive the certificate for a European patent as a digital file for download from the Mailbox.

(3) Proprietors or representatives without an activated Mailbox will receive the certificate for a European patent on paper and delivered by postal services.

(4) If there is more than one proprietor, a certificate will be issued to each of them.

(5) Certified copies of the certificate with the specification annexed will be issued in paper format to the proprietor upon request and payment of an administrative fee

Article 2

Content of the certificate for a European patent

(1) The certificate will state:

? the patent number

? the name and address of the patent proprietor. If there is more than one proprietor, it shall mention each of them by name.

? the title of the invention

? the date of publication of the mention of the grant in the European Patent Bulletin

In addition, it will certify that the patent has been granted in respect of the invention described and the states designated in the patent specification to the persons named in the certificate.

(2) Paragraph 1 will apply mutatis mutandis to the certificate for a European patent that has been maintained in amended or limited form.

Article 3

Previous decisions superseded

Upon entry into force of this decision, the decision dated 16 July 2013 concerning the content, form and means of communication of the certificate for a European patent (OJ EPO 2013, 416) will cease to have effect.

Article 4

Entry into force

This decision will enter into force on 1 April 2022.

Done at Munich, 17 December 2021″

“From 1 April 2022, the certificate for a European patent will be communicated electronically to the Mailbox. If the proprietor (or their representative) has not activated their Mailbox, the certificate will be issued on paper and delivered by postal services.

The electronically issued certificate for a European patent will be a digital colour document. The Mailbox user can store and forward the certificate digitally or print it in colour. This allows for fast and secure retrieval of the certificate and will contribute to sustainability goals.

In parallel with the transition to an electronic certificate for a European patent, the EPO has refreshed the layout and content of the certificate. Further information about the patent will appear on the certificate, namely:

? the title of the invention, and,

? the date of publication of the mention of the grant in the European Patent Bulletin.

The above changes will be implemented for certificates issued on or after 1 April 2022.

Certified copies of the certificate with the specification annexed will continue until further notice to be issued on paper upon request and payment of an administrative fee. “

“The President of the European Patent Office (EPO), having regard to Article 10(2) EPC, Rules 2, 30(1), 68(2), 73(2) and 163(3) EPC and Rule 13ter PCT, has decided as follows:

Article 1

Filing of sequence listings in respect of European patent applications

(1) If nucleotide or amino acid sequences are disclosed in a European patent application, the description must contain a sequence listing in XML format complying with WIPO Standard ST.26.

(2) A sequence listing filed on the date of filing of the European patent application will be published with the application documents (Rule 68(1) EPC) and the patent specification (Rule 73 EPC) as part of the description.

(3) Sequence listings may only be filed via the EPO’s Online Filing and Online Filing 2.0 services or on an admissible electronic data carrier

(4) If a sequence listing is also filed in another format accepted for the filing of documents, only the sequence listing complying with WIPO Standard ST.26 will be taken into account when searching the application.

(5) Following any revision of WIPO Standard ST.26, the President will decide on a date from which the revised version of the standard will apply to applications and will publish that information in the Official Journal together with any transitional provisions concerning the furnishing on or after that date of sequence listings related to applications filed prior to that date.

Article 2

Subsequent filing of sequence listings

(1) Where the applicant does not file a WIPO Standard ST.26-compliant sequence listing on the date of filing of the European patent application, the EPO will invite it to file such a sequence listing and to pay the late furnishing fee within a non-extendable period of two months from the invitation (Rule 30(3) EPC).

(2) A sequence listing filed after the date of filing of the European patent application must be accompanied by a statement to the effect that it does not include matter which goes beyond the content of the application as filed.

(3) Articles 1(3) and 1(5) of the present decision apply to subsequently filed sequence listings.

Article 3

Unreadable, incomplete or infected files

(1) If a file containing a sequence listing is unreadable or incomplete, the unreadable or incomplete part will be deemed not to have been filed.

(2) If a file containing a sequence listing is infected with a computer virus or contains other harmful software, the file will be deemed to be unreadable. The EPO is not obliged to open or process such files.

(3) If a file containing a sequence listing is defective within the meaning of paragraphs (1) or (2) at the time of filing, the applicant will be informed without delay. Article 2 of the present decision applies mutatis mutandis.

Article 4

Furnishing of sequence listings to the EPO acting as international authority under the PCT

If nucleotide or amino acid sequences are disclosed in an international patent application but a WIPO Standard ST.26-compliant sequence listing is not available to the EPO as International Searching Authority, Supplementary International Searching Authority or International Preliminary Examining Authority, the applicant will be invited to furnish such a listing under Rule 13ter.1(a) PCT and to pay the late furnishing fee under Rule 13ter.1(c) PCT within a non-extendable period of one month from the date of the invitation.

Article 5

Filing sequence listings with the EPO as designated or elected Office

On invitation to file a WIPO Standard ST.26-compliant sequence listing under Rule 163(3) EPC, Articles 1(3), 1(4), 1(5), 2 and 3 of the present decision will apply mutatis mutandis.

Article 6

Entry into force

(1) This decision enters into force on 1 July 2022 and applies to all European patent applications and international patent applications filed on or after that date.

(2) As of 1 July 2022, the decision of the President of the EPO dated 28 April 2011 on the filing of sequence listings (OJ EPO 2011, 372) will only apply to European and international patent applications with a date of filing prior to 1 July 2022.

Done at Munich, 9 December 2021″

“1. This notice complements the decision of the President dated 9 December 2021 on the filing of sequence listings (“decision of the President”), which enters into force on 1 July 2022. It describes the procedure under the EPC and PCT for the filing of sequence listings and reflects the changes in practice brought about by the transition to WIPO Standard ST.26

I. European patent grant procedure

Filing of sequence listings

2. If nucleotide or amino acid sequences are contained in the application documents and thus disclosed in a European patent application, the description must contain a sequence listing complying with WIPO Standard ST.26 (Rule 30(1) EPC in conjunction with Article 1 of the decision of the President).

3. WIPO Standard ST.26 is the internationally agreed standard for the presentation of nucleotide and amino acid sequence listings using XML (eXtensible Markup Language). The current version of the standard is available on the WIPO website.1 It describes the formal requirements for the filing of sequence listings and explains how the sequences contained in a sequence listing are to be presented.

4. Following any revision of WIPO Standard ST.26, the President will decide on a date from which the revised version will apply. This information will be published in the Official Journal together with any transitional provisions concerning the furnishing of sequence listings on or after that date in relation to applications filed prior to that date (Article 1(5) of the decision of the President).

5. The EPO recommends that applicants use the WIPO Sequence software to generate WIPO Standard ST.26-compliant sequence listings. The software can be downloaded free of charge from the WIPO website. Using the latest version of this desktop application makes it easier to prepare sequence listings that comply with the requirements of the standard. Applicants are free to use other software to prepare sequence listings. In such cases, they should use the sequence listing validation function of the WIPO Sequence software to verify whether the sequence listing complies with the standard. They should also use this function to check the correctness and completeness of the sequence listing, even if it has been prepared using the WIPO Sequence software.

6. For applications with a filing date on or after 1 July 2022, sequence listings must be submitted as a single XML file using the document type definition (DTD) presented in Annex II of WIPO Standard ST.26. Sequence listings may not be filed on paper or in PDF or TXT format (Article 1 of the decision of the President). If two or more sequence listings are filed on the filing date, only the standard-compliant sequence listing will be used as the basis for the search.

7. A standard-compliant sequence listing must be filed for all sequence information that conforms to the length thresholds defined in WIPO Standard ST.26, paragraphs 7-8, irrespective of whether this sequence information is claimed or not. If the European patent application discloses nucleotide or amino acid sequences that are fragments or variants of a priorart sequence, a standard-compliant sequence listing must be filed for these sequence fragments or variants. By way of exception, sequences which belong to the prior art and can be found in publicly accessible sequence databases do not need to be included in the sequence listing if they have been identified by their database accession number and either the version number or the database release number in the application as originally filed. This exception applies even if reference is made to these sequences in one or more claims or if the sequences are essential features of the invention or necessary for the prior-art search.

8. If reference is made to a previously filed application containing a sequence listing as part of the description under Rule 40(1)(c) EPC (Box 26 of Form 1001) applicants should note that if the sequence listing contained in the previously filed application does not comply with the standard, they will be invited to furnish one that is standardcompliant (see Guidelines for Examination in the EPO (“Guidelines”), A-IV, 5.2 for further details).

9. A sequence listing filed on the filing date is part of the description. When calculating the additional fee under Rule 38(2) EPC and Article 2, item 1a RFees, the pages of the sequence listing are disregarded if the listing is filed as a separate part of the description in XML format as required by WIPO Standard ST.26. If the sequence information in the sequence listing is reproduced in the description or in other parts of the application as filed, or is submitted as an image or in PDF format, contrary to the recommendation in the standard, then the pages concerned will be taken into account in the calculation of the additional fee (Guidelines A-III, 13.2).

10. Without prejudice to Rule 30 EPC, a sequence listing forming part of the description may be corrected or amended in accordance with Rule 139 and/or Article 123(2) EPC. In such cases, a complete new WIPO Standard ST.26-compliant sequence listing containing the corrections or amendments is to be filed.

Subsequently filed sequence listings – late furnishing fee – loss of rights

11. If the applicant does not file a WIPO Standard ST.26-compliant sequence listing on the date of filing of the European patent application, or if the filed sequence listing is not standard compliant, a standard-compliant listing must be submitted. The Receiving Section will invite the applicant to file a standard-compliant sequence listing and to pay the late furnishing fee within a non-extendable period of two months (Rule 30(3) EPC). The communication will also indicate any identified deficiencies.

12. Where the applicant fails to file a WIPO Standard ST.26-compliant sequence listing and to pay the late furnishing fee in due time, the application will be refused (Rule 30(3) EPC). This also applies if a sequence listing is subsequently filed in XML format but still contains other deficiencies with respect to the standard that were not remedied in the reply to the invitation under Rule 30(3) EPC. As a rule, only one invitation under Rule 30(3) EPC is issued. A further invitation under Rule 30(3) EPC will only be issued if the first invitation did not draw attention to all the deficiencies.3 No late furnishing fee is due if a standard-compliant sequence listing is filed after the date of filing but before the Receiving Section has issued the communication under Rule 30(3) EPC.

13. If an application is refused under Rule 30(3) EPC, the applicant can request further processing under Article 121 and Rule 135 EPC. A further processing fee is payable for each omitted act. The filing of a WIPO Standard ST.26-compliant sequence listing and the payment of the late furnishing fee are considered to be separate acts (Guidelines E-VIII, 2).

14. A subsequently filed sequence listing may contain only the sequence information – in standardised form – contained in the original application documents. It may contain neither more nor fewer sequences than the number of sequences disclosed in the original description, and the numbering of the sequences must remain unchanged. The applicant must submit a statement to that effect (Article 2(2) of the decision of the President). It is recommended that the statement be worded as set out in the footnote.

15. A sequence listing filed after the date of filing is not part of the description and therefore cannot be used to determine the originally disclosed content of the application (Rule 30(2) EPC). It can only be used for the purposes of the search, and will not be published with either the application documents or the patent specification.

Divisional applications

16. The procedure set out in points 2-15 applies, mutatis mutandis, to European divisional applications unless otherwise provided hereafter. As an independent European patent application, a divisional application must also satisfy the requirements of Rule 30 EPC in conjunction with the decision of the President.5 Consequently, a sequence listing forming part of the description of a divisional application filed on or after 1 July 2022 must comply with WIPO Standard ST.26.

17. If a sequence listing is to form part of the description of the divisional application, it must be submitted on the date of filing with the other documents making up the divisional application. The only exception is when reference is made to a previously filed application containing a sequence listing as part of the application under Rule 40(1)(c) EPC (see point 8).

18. Where the applicant of a divisional application has filed a WIPO Standard ST.26-compliant sequence listing in the earlier application (parent application), the EPO will, upon request, add it to the file of the divisional application. This sequence listing will be used for search purposes only. It will not form part of the description of the divisional application. To facilitate the procedure, the corresponding checkbox in the EPO online filing tools and in EPO Form 1001 is pre-crossed so that a separate request does not need to be filed. Furthermore, the following is noted:

? The EPO will not follow the above procedure if the applicant, of its own motion, files a WIPO Standard ST.26- compliant sequence listing as part of the application documents of the divisional application.

? Sequence listings in the earlier (parent) application complying with earlier standards (e.g. WIPO Standard ST.25) will not be added to the file of the divisional application. In such cases, applicants must file a WIPO Standard ST.26-compliant sequence listing in the divisional application.

II. Procedure before the EPO as international authority under the PCT

19. International applications filed on or after 1 July 2022 disclosing nucleotide and/or amino acid sequences must include a sequence listing part of the description complying with WIPO Standard ST.26 (Rule 5.2 PCT). If a standard-compliant sequence listing is not available to the EPO as International Searching Authority (ISA), Supplementary International Searching Authority (SISA) or International Preliminary Examining Authority (IPEA), it will invite the applicant to furnish to it such a sequence listing under Rule 13ter.1(a) PCT within a nonextendable period of one month from the date of the invitation (Article 4 of the decision of the President).

20. The furnishing of a sequence listing in response to an invitation by the EPO as ISA, SISA or IPEA under Rule 13ter.1(a) or 13ter.2 PCT is subject to the payment of the late furnishing fee fixed by the President (Rule 13ter.1(c) PCT and Article 4 of the decision of the President). The late furnishing fee may be refunded only where the amount was paid by mistake or without cause, or the amount paid was in excess of the amount due (Agreement between the EPO and the IB of WIPO, Annex D, Part II, paragraph (1)6 ).

21. Any WIPO Standard ST.26- compliant sequence listing furnished by the applicant under Rule 13ter PCT for the purposes of the search only must be accompanied by a statement to the effect that the sequence listing does not include matter which goes beyond the disclosure in the international application as filed (Administrative Instructions under the PCT, Annex C, paragraph 39). Any sequence listing furnished under Rule 13ter PCT is not part of the international application.

22. If the applicant fails to furnish the required WIPO Standard ST.26- compliant sequence and pay the late furnishing fee due within the period under Article 4 of the decision of the President, the EPO as ISA will not issue any further invitation to furnish the sequence listing, and will search the international application only to the extent that a meaningful search can be carried out without the sequence listing (Rule 13ter.1(d) PCT). In such cases, the international search report will either indicate that certain claims were found unsearchable or will be replaced by the declaration under Article 17(2)(a) PCT. However, if the standard-compliant sequence listing is received and the late furnishing fee paid after the applicable period yet before the start of the international search, the standardcompliant sequence listing will be considered as having been received within that period.

23 If, contrary to the statement referred to in point 21 above, the EPO as ISA finds that the sequence listing in XML format furnished under Rule 13ter PCT goes beyond the disclosure in the application as originally filed, it will indicate that finding in the international search report and will proceed under point 22 above, as if the sequence listing in XML format had not been furnished under Rule 13ter PCT.

24. If a sequence listing is found to be deficient within the meaning of Article 3(1) or (2) of the decision of the President, the applicant will be invited to submit a replacement listing within the period under Article 4 of the decision of the President or, if such an invitation has already been issued, within the time remaining in the period stipulated in the invitation (point 22 above).

25. If the international search report has not been drawn up either in full or in part (point 22 above), the EPO as IPEA will perform an international preliminary examination only to the extent that a meaningful examination can be carried out (Rule 66.1(e) PCT). The applicant will be informed accordingly and an entry made in the international preliminary examination report (Rules 66.2(a)(vii) and 70.12(iv) PCT). In such cases, the EPO as IPEA will not invite the applicant to furnish a sequence listing.

26. If, after receipt of the documents specified in Rule 45bis.4(e)(i) to (iv) PCT, the EPO as SISA finds that a WIPO Standard ST.26-compliant sequence listing is not available to it, it will proceed as above, in particular as set out under point 19. The EPO as SISA will start the supplementary international search in accordance with Rule 45bis.5(a) PCT only if a standard compliant sequence listing is available to it, i.e. if it is furnished to the International Bureau of WIPO under Rule 45bis.1(c)(ii) PCT and thereafter transmitted to the EPO under Rule 45bis.4(e)(iii) (Agreement between the EPO and the IB of WIPO, Annex B, paragraph (3)7 ).

III. Procedure before the EPO as designated or elected Office (European phase)

27. WIPO Standard ST.26 applies to all Euro-PCT applications with an international filing date of 1 July 2022 or later. For international applications with an earlier international filing date, WIPO Standard ST.25 continues to apply, even if the European phase is entered after 1 July 2022 (see Article 6 of the decision of the President dated 9 December 2021 and section V below).

28. If a WIPO Standard ST.26- compliant sequence listing is contained in the international application under Rule 5.2 PCT, furnished to the EPO under Rule 13ter.1(a) PCT or otherwise available to the EPO, the applicant does not have to submit it again upon entry into the European phase.

29. Where the international application was not published in an official language of the EPO, the applicant must furnish a translation of the published application within a period of 31 months from the date of filing or, if priority has been claimed, from the earliest priority date. One of the aims of the new standard is, however, to limit the situations in which a translation of the sequence listing is required.

30. The majority of the content in a standard-compliant sequence listing must be provided using the ?controlled vocabulary? listed in Annex 1 of WIPO Standard ST.26. Controlled vocabulary is considered to be languageindependent, i.e. contained in any or all of the EPO’s official languages, and thus does not need to be translated upon entry into the European phase.

31. The remaining qualifiers in a standard-compliant sequence listing are considered to be ?language-dependent? because they are not restricted to controlled vocabulary (WIPO Standard ST.26, points 85-88 and Annex I, Sections 6 and 8). Applicants must provide these qualifiers in one of the EPO’s official languages. The standard allows these ?languagedependant? qualifiers to be provided in two languages within the same sequence listing. If two versions are provided, one must be in English. A translation does not have to be filed if either of the two versions of the ?language-dependant? qualifiers is English or the EPO official language in which the international application was published. Where multiple versions of the language-dependent qualifiers are present, the standard also allows applicants to indicate which language is to be considered the original language.

32. If the ?language-dependent? qualifiers are not available in English or the EPO official language in which the international application was published, then a translation of the sequence listing must be submitted upon entry into the European phase. This is to be done by filing a WIPO Standard ST.26- compliant sequence listing with the ?language-dependent? qualifiers in English or the EPO official language into which the other application documents have been translated.

33. If a WIPO Standard ST.26- compliant sequence listing is not available to the EPO on the expiry of the period under Rule 159(1) EPC, the applicant will be invited to file one and to pay the late furnishing fee within a period of two months from notification of the invitation (Rule 163(3) EPC in conjunction with Article 5 of the decision of the President). This period cannot be extended. Rule 30(2) and (3) EPC and Article 2 of the decision of the President apply mutatis mutandis.

34. If the deficiencies are not remedied and/or the late furnishing fee is not paid in due time, the application will be refused (Rule 30(3) EPC). The applicant may request further processing of the application under Article 121 EPC (see point 13 of this notice).

IV. Publication and notification of sequence listings

35. Where a sequence listing is to be published with the application documents (Rule 68(1) EPC; Article 153(4) EPC) or as part of the patent specification (Rule 73 EPC) (Article 1(2) of the decision of the President), it will be published in the format in which it was received.

36. A sequence listing filed after the date of filing, i.e. for search purposes only, will not be published with either the application documents or the patent specification because it is not part of the description (Rule 30(2) EPC).

37. Where the application documents on which the examining division intends to grant a patent include an XML format sequence listing, that sequence listing in XML format is contained in the communication under Rule 71(3) EPC. For applicants who have activated their Mailbox, the XML sequence listing will appear in the Mailbox along with the other documents on which the examining division intends to grant a patent. For applicants who have not activated the Mailbox, a hyperlink via which the sequence listing in XML format can be downloaded will be included in the communication sent by post.

V. Applications filed before 1 July 2022

38. WIPO Standard ST.26 does not apply to European and international applications filed before 1 July 2022. Instead, these applications must continue to comply with WIPO Standard ST.25 upon entry into the European phase and in the event of corrections, rectifications, amendments or translations being made. The provisions of the decision of the President dated 28 April 2011 on the filing of sequence listings continue to apply for these applications (see Article 6(2) of the decision of the President dated 9 December 2021 on the filing of sequence listings).

39. Upon entry into the European phase, the pages of any WIPO Standard ST.25-compliant sequence listing filed in TXT format as a separate part of the description will be excluded when calculating the additional fee under Rule 38(2) EPC and Article 2, item 1a RFees.

40. Any corrections, rectifications, amendments or translations of a WIPO Standard ST.25-compliant sequence listing are to be made by filing a complete new Standard ST.25- compliant sequence listing in TXT format containing the relevant changes (Article 123(2) EPC, Rule 39 EPC, Article 34 PCT and Rule 91 PCT).

41. Where the examining division intends to grant a patent which contains a sequence listing part of the description in TXT format, that sequence listing in TXT format will be included in the communication under Rule 71(3) EPC. Paragraph 37 applies mutatis mutandis

VI. Entry into force and effect of previous notices from the EPO

42. The present notice supersedes the notice from the European Patent Office dated 18 October 2013 concerning the filing of sequence listings (OJ EPO 2013, 542) with effect from its entry into force on 1 July 2022.”

“The President of the European Patent Office,

having regard to Article 10(2)(a) of the European Patent Convention (EPC),

having regard to Articles 1(2)(a) and 5(a) and (b) of the Implementing Rules for Articles 1b and 32a of the Service Regulations for permanent and other employees of the European Patent Office on the protection of personal data (“Data Protection Rules”),

considering that the task of the European Patent Organisation pursuant to Article 4(3) EPC is to grant European patents and that this task is carried out by the European Patent Office (EPO),

considering further that Part X of the EPC provides for application of the Patent Cooperation Treaty of 19 June 1970 (PCT) and that, in accordance with Article 150 EPC, the EPO applies the provisions of the PCT and its Regulations, supplemented by the provisions of the EPC, in proceedings relating to international applications filed under the PCT,

has decided as follows:

Article 1

Processing of personal data

(1) Personal data are processed by the departments of the EPO specified in Article 15(a) to (e) EPC in patent-grant and related proceedings conducted in accordance with the EPC, including its Implementing Regulations and any other provisions applicable under it, as set out in the annex to this decision. Personal data are likewise processed by the EPO when acting as a PCT authority (receiving Office or International Authority) in accordance with the PCT, its Regulations and any other provisions applicable under it, as set out in the annex to this decision.

(2) Processing of personal data in accordance with paragraph 1 is necessary for the performance of tasks carried out in the exercise of the official activities of the European Patent Organisation or in the legitimate exercise of the official authority vested in the EPO as the controller of the personal data it processes and for compliance with a legal obligation to which the EPO is subject.

Article 2

Primary of the EPC and the PCT

In case of conflict, the provisions of the EPC, including its Implementing Regulations and any other provisions applicable under it, and the provisions of the PCT, including its Regulations and any other provisions and established practices applicable under it, prevail over the Data Protection Rules.

Article 3

Entry into force

This decision enters into force on 1 January 2022. It applies to any processing of personal data ongoing on or initiated after that date.

Done at Munich, 13 December 2021″

For full details of the Annex to this article, please refer to the original Official Journal entry.