http://ipkitten.blogspot.com/2022/08/epo-responds-to-criticism-over-st26.html
The European Patent Office (EPO) has issued a response to epi’s letter voicing concerns over implementation of the new sequence listing format, ST.26, for patent applications (IPKat). The EPO’s full response has been published by epi and can be read here.
| Sequence of cats |
Unsurprisingly, the EPO will not be changing the requirement for all new divisional applications to be filed with an ST.26 sequence listing. The EPO considers any concerns over the potential for ST.26 sequences listings to unavoidably add matter, to have already been addressed by the inclusion of the Annexes to the new sequence standard. These Annexes provide guidance on how to avoid added matter when converting an ST.25 to a ST.26. However, as pointed out by epi, these annexes themselves admit that there are situations in which added matter cannot be avoided by a straight ST.25 to ST.26 conversion (IPKat).
In order to avoid added matter, the EPO advice is as follows:
“The applicant may choose to file a sequence listing in PDF on the filing date, or to file the divisional application by reference to the description of the parent application, and thus to file the ST.26 sequence listing only for search purposes under Rule 30(3) EPC. This prevents added subject matter issues from arising but an additional fee may fall due, reflecting the additional burden on the side of the EPO.”
A sequence listing filed after the filing date does not form part of the description of a patent application, and may require payment of a late furnishing fee. epi raised concerns about the late furnishing fee and the excess page fees that will be due if a very long ST.25 sequence listing is added to the description.
The EPO response goes on to explain that its reason for requiring ST.26 for all new applications, including divisionals, is that it will allow the “benefits of the new standard to materialize sooner while reducing the necessary IT support for the old standard as far as possible”.
The EPO therefore seems content with shifting the costs associated with ST.25 to ST.26 transition to EPO users.
Further reading
EPO under fire for its approach to ST.26 sequence listings (1 Aug 2022)
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