Q: What is the requirement for submitting a computer readable copy of the "Sequence Listing"?

According to 37 CFR 1.821(e) , a computer readable form (CRF) of the "Sequence Listing" must be submitted in applications filed under 35 U.S.C. 111(a) or in national stage applications submitted under 35 U.S.C. 371. The MPEP states: A separate computer readable form must be submitted via the USPTO patent electronic filing system or on read-only optical disc(s), as permitted by 37 CFR 1.824(b), when the "Sequence Listing" required by 37 CFR 1.821(c) is submitted as a PDF image file or on physical sheets of paper in a U.S. application filed under 35 U.S.C. 111(a) (see 37 CFR 1.821(e)(1)) or when the "Sequence Listing" required by 37 CFR 1.821(c) is submitted as a PDF image file or on physical sheets of paper and not also submitted as an ASCII plain text file in a national stage application (see 37 CFR 1.821(e)(2)). However, the USPTO prefers submission of sequence information as an ASCII plain text file via their electronic filing system or on read-only optical discs, as this serves both requirements of 37 CFR 1.821(c) and (e) and is not included in the application size fee determination. To learn more: sequence listing computer readable form CRF ASCII plain text patent application

Question 1

What is the requirement for submitting a computer readable copy of the "Sequence Listing"?

Accepted Answer

According to 37 CFR 1.821(e), a computer readable form (CRF) of the "Sequence Listing" must be submitted in applications filed under 35 U.S.C. 111(a) or in national stage applications submitted under 35 U.S.C. 371. The MPEP states:

A separate computer readable form must be submitted via the USPTO patent electronic filing system or on read-only optical disc(s), as permitted by 37 CFR 1.824(b), when the "Sequence Listing" required by 37 CFR 1.821(c) is submitted as a PDF image file or on physical sheets of paper in a U.S. application filed under 35 U.S.C. 111(a) (see 37 CFR 1.821(e)(1)) or when the "Sequence Listing" required by 37 CFR 1.821(c) is submitted as a PDF image file or on physical sheets of paper and not also submitted as an ASCII plain text file in a national stage application (see 37 CFR 1.821(e)(2)).

However, the USPTO prefers submission of sequence information as an ASCII plain text file via their electronic filing system or on read-only optical discs, as this serves both requirements of 37 CFR 1.821(c) and (e) and is not included in the application size fee determination.

To learn more:

Question 2

What are the requirements for submitting an IDS electronically?

Accepted Answer

Electronic submission of an Information Disclosure Statement (IDS) is limited to specific methods and formats. The MPEP states:

'Electronic means or medium for filing IDSs are not permitted except for: (A) IDSs electronically submitted using the USPTO patent electronic filing system (see MPEP § 609.07); or (B) copies of large tables, computer program listings, and sequence listings submitted as a PDF file and a "Sequence Listing XML" submitted as an XML file on a read-only optical disc in compliance with 37 CFR 1.52(e)(2) and (3) which are cited in a paper IDS.' (MPEP 609.04(a))

Key points for electronic IDS submission:

Use the USPTO patent electronic filing system for general IDS submissions
Large tables, computer program listings, and sequence listings can be submitted as PDF files
"Sequence Listing XML" must be submitted as an XML file on a read-only optical disc
A read-only optical disc cannot be used to submit an IDS listing or copies of documents (except for the items mentioned above)
Published information, such as software output or videos, must be reduced to writing (e.g., screen shots, transcripts)

It's important to follow these guidelines to ensure proper processing of your IDS by the USPTO.

To learn more:

Question 3

What are the format options for submitting a "Sequence Listing" to the USPTO?

Accepted Answer

The USPTO provides multiple format options for submitting a "Sequence Listing" as part of a patent application. These options include:

As an ASCII plain text file via the USPTO patent electronic filing system
On a read-only optical disc
As a PDF image file via the USPTO patent electronic filing system
On physical sheets of paper

The MPEP section 2424.01 states:

"37 CFR 1.823(b)(3) sets forth the format and content for a "Sequence Listing" that is submitted either as a PDF image file via the USPTO patent electronic filing system or on physical sheets of paper, in accordance with 37 CFR 1.823(b)(1)(i) - (vi)."

It's important to note that the specific requirements and procedures may vary depending on the chosen format. Applicants should carefully review the relevant USPTO guidelines and regulations to ensure compliance with the chosen submission method.

To learn more:

Question 4

Is translating a "Sequence Listing XML" considered an amendment?

Accepted Answer

No, translating a "Sequence Listing XML" is not considered an amendment under certain conditions. According to MPEP 2414.04:

"Compliance with paragraphs (a) through (c) of this section is not required for submission of a "Sequence Listing XML" that is solely an English translation of a previously submitted "Sequence Listing XML" that contains non-English values for any language-dependent free text elements (as per § 1.833(b)(3))."

This means that providing an English translation of language-dependent free text elements in a previously submitted "Sequence Listing XML" does not constitute an amended "Sequence Listing XML" under 37 CFR 1.835(a) or 1.835(b).

To learn more:

Question 5

How can I obtain copies of U.S. patents and patent application publications cited in an Office action?

russ.krajec@blueironip.com · Accepted Answer

The USPTO provides several options for obtaining copies of cited U.S. patents and patent application publications, as outlined in MPEP 707.05(a):

Patent Center (for registered users or published applications)
Patent Public Search tool (for all users)
Patent and Trademark Resource Centers (PTRCs)
Patent Full-Text Databases on the USPTO website
E-Patent Reference (for registered users)
Commercial sources

The MPEP advises: To obtain copies of the cited U.S. patent(s) and/or U.S. patent application publication(s), any of the following options may be used, free of charge: followed by a detailed list of these options.

To learn more:

U.S. patents

Question 6

Who receives copies of the Ex Parte Reexamination Certificate?

Accepted Answer

The distribution of Ex Parte Reexamination Certificates is governed by specific USPTO rules. According to MPEP 2288, which cites 37 CFR 1.570(c):

"The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte reexamination certificate will also be mailed to the requester of the ex parte reexamination proceeding."

This means that two parties are guaranteed to receive copies of the certificate:

The patent owner, who receives the original certificate at their address of record.
The requester of the ex parte reexamination, who receives a copy of the certificate.

This distribution ensures that the primary parties involved in the reexamination process are directly informed of its outcome. The public can access the information through the Official Gazette notice, as mentioned in a previous FAQ.

To learn more:

Ex Parte Reexamination
Patent Certificate
USPTO
Certificate Distribution

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What is the requirement for submitting a computer readable copy of the “Sequence Listing”?

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Is translating a “Sequence Listing XML” considered an amendment?

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How can I obtain copies of U.S. patents and patent application publications cited in an Office action?

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