Can You Change the Document Description in the Uspto Efs After Uploading a Document

    By Christopher P. Vocalizer --

Since the launch of EFS-Web in the autumn of 2006, applicants take had the option of east-filing sequence listings as text (.txt) files but, rather than filing sequence listings in both paper and calculator readable copies.  Several biotech prosecutors in our office have had recent discussion and debate about what files and statements can or must exist filed with an EFS-Web filed sequence list in lodge to be compliant with the requirements under the Legal Framework and in lodge for it to be considered as office of the original application.

As we discussed in November 2006 (run across "Hassle-Free Filing of Sequence Listings on EFS-Web Version i.1"), the early version of EFS-Web was limited because information technology allowed submission of files in .pdf format only and was not able to handle sequence listing filings considering they needed to exist submitted equally text files (.txt).  Since the upgrade to EFS-Web 1.1 in Oct of 2006, practitioners have been able to electronically submit text files such as sequence listings, estimator plan listings, and mega tables.  This eliminated the need to submit these types of files on supplemental electronic media (e.thousand., CD-R, 3.v" deejay, etc.) and avoid fees for excess application size (currently $270 for big entities or $135 for small entities per 50 pages after the first 100).

Section XIII of the EFS-Web Legal Framework clearly authorizes the filing of a sequence list as a text file (37 C.F.R. § i.821(c)), provided the file is ASCII compliant.  When submitting a sequence listing in this fashion, 37 C.F.R. § 1.52(e)(5) requires that the specification be amended to contain an incorporation-by-reference of the material in the text file in a separate paragraph which identifies the name of the text file, the date of its cosmos, and the size of the text file in bytes.  This paragraph should exist inserted immediately before the Background of the Invention (37 C.F.R. § ane.77(b)(5)).  Pursuant to 37 C.F.R. § 1.821, a patent application which discloses nucleotide and/or amino acid sequences must contain both "a newspaper copy" of the sequence listing (37 C.F.R. § 1.821(c)) and a figurer-readable class (CRF) of the sequence listing (37 C.F.R. § 1.821(e)).  As long equally the sequence list text file submitted via EFS-Web is a compliant ASCII text file, information technology will serve as both the paper copy required by § 1.821(c) and the CRF required by § 1.821(e).  Considering the single file serves this dual role, the statement  indicating that the paper re-create and CRF re-create of the sequence listing are identical is no longer necessary (37 C.F.R. § 1.821(f)).  There is also no need to submit any additional copies of the sequence listing pursuant to § 1.821(e).  That is, if the sequence list text file submitted by EFS-Web is ASCII compliant, the filer should non separately request the utilise of a compliant calculator readable sequence list that is on file for another application.  If such a request is filed, the Office volition not behave out the asking but will use the sequence listing submitted with the application as originally filed via EFS.

When filing a sequence listing in response to a Detect to Comply or Notice of Missing Parts, you must include a statement indicating that the sequence listing does not include any new matter that goes beyond the disclosure of the application equally filed.  As with the filing of a sequence listing with an original awarding, the statement under § i.821(f) is not necessary, and requests under § one.821(e) will not be carried out.

Sequence listing text files submitted by EFS-Web have a size limit of 100 megabytes.  Considering of this size limit, filers with sequence listing files larger than 100 megabytes are encouraged to submit the text file on compact disc via Express Mail (37 C.F.R. § 1.x) on the date of the corresponding EFS-Spider web filing, if the filer wishes the electronic copy to be considered part of the application equally filed.  Alternatively, a filer may submit the application in paper and include the electronic copy of the sequence listing text file on compact disc in accord with 37 C.F.R. § i.52(e).  Co-ordinate to the Legal Framework:

[S]equence listing text files may not exist partitioned into multiple files for filing via EFS-Web every bit the EFS-Web electronic filing arrangement is not currently capable of handling such submissions.  If the sequence list is filed on a compact disc, the sequence listing must be a single document, but the document may be dissever using software designed to divide a file, that is too large to fit on a unmarried compact disc, into multiple concatenated files.  If the filer breaks upwardly a sequence listing so that it may be submitted on multiple meaty discs, the compact discs must exist labeled to indicate their order (e.g., "one of X", "2 of X", etc.).

Electronic filing of sequence listing text files in international applications with the U.South. Receiving Office of the Pct is authorized under sections XVII and XVIII of the EFS-Web Legal Framework.  Under PCT Dominion five.2(a), the sequence listing is filed as a carve up part of the clarification and should exist submitted every bit a unmarried ASCII text file.  The text file volition serve both equally the written portion of the sequence list under Pct Rule 5.ii and the electronic form nether Percentage Dominion 13ter.1(a).  Furthermore, the required statement in paragraph 40 of Annex C that "the information recorded in the electronic form is identical to the sequence list in the application" is not required.  Similar to U.Southward. filings, follow-on submissions will form office of the international awarding if they are filed on the same date on which the international application was filed.  EFS-Web can exist used to submit a sequence listing in text format after the international filing appointment in response to a requirement under Per centum Rule 13ter, all the same information technology volition not course function of the international application every bit gear up forth in PCT Dominion 13ter.one(east).

A noteworthy difference between U.Due south. and Percent practise concerning the filing of sequence listings in electronic format relates to fees.  As noted above, the USPTO does non charge excess page fees for compliant sequence listings submitted by EFS-Spider web simply.  Nonetheless, the Percentage does accuse a fee for electronically submitting sequence listings only as text files (or on any electronic media).  The fee is equivalent to the fee for 400 excess pages (currently $5,600), so filing sequence listings in the PCT every bit electronic text files only makes economic sense if the sequence listing is over 400 pages in length.  For sequence listings that are less than 400 pages, a better alternative is to submit the sequence listing as a .pdf every bit office of the awarding (so every bit to pay only for the pages submitted), while also including the text file of the sequence listing.  In this situation, the filer should also submit the argument required by Annex C.

The comments to this entry are airtight.

montgomeryslosicessir.blogspot.com

Source: https://www.patentdocs.org/2009/01/sequence-listing-efiling-options-using-efsweb.html

Share this post