Q10: Do the new ST.26 sequence rules that go into effect on July 1, 2022 apply to all sequence listings filed after July 1?
A10: No, the application of the new ST.26 standard (as implemented in 37 CFR 1.831-1.835) is governed by the application’s filing date and not the date when the sequence listing is being filed.
If your application is entitled to a filing date before July 1, 2022 and you are filing an accompanying sequence listing before or after July 1, 2022, the sequence listing must comply with 37 CFR 1.821-1.825 (which implement WIPO Standard ST.25).
If your application is entitled to a filing date on or after July 1, 2022 and you are filing an accompanying sequence listing on or after July 1, 2022, the sequence listing must comply with 37 CFR 1.831-1.835 (which implements WIPO Standard ST.26).
As detailed in the Summary of Changes section of 87 Fed. Reg. 30806:
“[a]pplications pending prior to July 1, 2022, will not have to comply with WIPO Standard ST.26; rather, such applications will require the submission of a ‘‘Sequence Listing,’’ as defined in 37 CFR 1.821(a), in compliance with 37 CFR 1.821 through[sic] 1.825.”
Q11: If I am filing a child application after July 1, 2022, that is a continuation of a parent application filed before July 1, 2022, and that parent application contained a sequence listing in ST.25 text format, can I file the ST.25 text format sequence listing from the parent application in my continuation child application and be compliant with the sequence rules?
A11: No, you must file an ST.26 (XML) sequence listing in the child application. It is worth noting that such a continuation filing will not be an exact copy of the papers files in the parent application because the sequence listing will not be identical since it must be updated from an ASCII text format to an XML format. Any details (e.g. features) provided in the new ST.26 (XML) sequence listing in the child application must find support in the original parent application filing to retain CON status. WIPO Standard ST.26, Annex VII, contains detailed guidance on transforming an ST.25 sequence listing into ST.26 format without adding new matter.
As detailed in the Applicability section of 87 Fed. Reg. 30806:
“an application that has a filing date on or after July 1, 2022, will be required to provide a ‘‘Sequence Listing XML’’ …. This includes applications having an international filing date on or after July 1, 2022, that claim benefit or priority to applications with filing dates before July 1, 2022. Such applications include, but are not limited to, applications having one or more benefit or priority claims under 35 U.S.C. 119(e) (claiming the benefit of a provisional), 35 U.S.C. 120 (claiming the benefit as a continuation and/or continuation-in-part), 35 U.S.C. 121 (claiming the benefit as a divisional), 35 U.S.C. 365(c) (claiming the benefit as a continuing application to a PCT application), or 35 U.S.C. 119(a)–(d) or 35 U.S.C. 365(a) (claiming the priority to a foreign filed application or a prior filed PCT). If a prior application to which benefit or priority is claimed contains a ‘‘Sequence Listing’’ in Standard ST.25 format (in compliance with 37 CFR 1.821 through 1.825), the applicant will be required to convert that ‘‘Sequence Listing’’ to WIPO Standard ST.26 format (a ‘‘Sequence Listing XML’’ in compliance with 37 CFR 1.831 through 1.835) for inclusion in the new application filed on or after July 1, 2022”
In other words, there is no “grandfathering” per the rules in 37 CFR 1.831-1.835. This applies to applications claiming benefit or priority to an earlier (before July 1, 2022) filed application under 35 USC 119, 120, 121, or 365.
