As discussed in detail in a previous article, the EPO’s insistence that applicants for divisional applications file a sequence listing in ST.26 format, even where the parent application contains a sequence listing in ST.25 format, provides a headache for European patent attorneys trying not to fall foul of the EPO’s strict rules concerning added subject matter.
Our previous article discussed several ways by which this problem could be mitigated, including filing a copy of the original ST.25 sequence listing (in pdf format) as part of the description of the divisional application as filed, and then following up with an ST.26 version of the sequence listing after the date of filing. This option is attractive: (a) because the applicant is then certain that all of the subject matter that was in the parent application as filed (including in the sequence listing) is thus included in the divisional application; and (b) because the submission of the ST.26 sequence listing after the filing date means that it does not form part of the description and thus cannot cause any added subject matter issues.
The principal downsides of this approach were that filing the ST.26 sequence listing “late” could lead to the requirement by the EPO to pay a late furnishing fee and secondly that the inclusion of the ST.25 sequence listing in pdf format could result in an increase in excess page fees required to be paid by the applicant. If the sequence listing is very long (they can often run to hundreds of pages), this could lead to very large excess page fees (which are currently charged at €17/page). The first downside can be avoided by filing the ST.26 listing just after filing the divisional application (before the EPO has noticed its absence), which avoids the need to pay the late furnishing fee. However, up until now, there was no way of mitigating the need to pay excess page fees.
This is why it is very welcome news for applicants that the EPO plans to drop the requirement to pay excess page fees for additional pages of ST.25 format sequence listing included as part of the description of a divisional application. News of this pragmatic decision can be found in a letter
from the EPO to the Institute of Professional Representatives before the European Patent Office (epi).
The letter confirms that users will be informed of this change of practice in a notice from the EPO to be published in the Official Journal of November 2023. The letter to the EPI does not confirm when the change of practice will come into effect, but it is presumed that this will be clarified in the notice to be published in the Official Journal.
Further updates regarding this matter will be followed closely and reported here.
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