The Confused USPTO Policy On Certified Copies Of Patent Applications

Obtaining certified copies of patent applications can be essential to perfecting a priority claim. But when a U.S. priority application contains a sequence listing, USPTO practices make it difficult to satisfy this requirement. While there is a work-around, it is cumbersome and potentially costly. The USPTO can solve this problem, but will it?

The Patent Document Exchange Does Not Replace Hard Copies

When a foreign-filed patent application claims priority to a U.S. application, an applicant typically must "perfect" that priority claim by providing a certified copy of the U.S. application within a specific time period. See, e.g., PCT Rule 17 (WIPO requirements); Art. 88 EPC and R. 53(1) EPC (EPO requirements). While the cost and burden of providing a certified paper copy has been mitigated by the WIPO Digital Access Service (DAS) for Priority Documents and multilateral agreements such as the patent document exchange (PDX), these electronic data sharing agreements do not entirely remove the requirement to provide a certified hard copy. Only a few countries are members of the PDX. Indeed, most PCT members have not implemented DAS, due to operational, or technical factors. Therefore, for many jurisdictions, hard copies of priority documents still are required.

A Hard Copy May Also Be Required Where PDX and DAS Exists.

PDX and DAS rely on the patent offices to exchange data. If there is an error in this data sharing, has the applicant perfected priority? An opponent can mount a very formalistic argument that the law places the onus on the applicant to provide a certified copy of the priority document, and therefore any errors must be counted against the applicant. Some have even argued that the law has not caught up with PDX and DAS practice and, therefore, reliance on electronic data sharing is insufficient under the law. I am not aware these arguments being successful but, for high value patent applications, some practitioners always file a hard copy of the priority document.

More Burdens if the Priority Application Contains a Sequence Listing

Many biotechnology applications include a sequence listing as part of the application, and it may be the most important part of some applications. However, when issuing a certified copy, the USPTO treats electronically-filed sequence listings as if they are not part of the application.

• If you request a certified copy, the USPTO will print and certify the specification, figures and other documents, but will not provide the sequence listing as a matter of course. Presumably, this practice applies to other "supplemental content" such as large data files. In order to obtain a copy of the sequence listing, it necessary to separately request the sequence listing, and pay a separate fee.
• If you request the sequence listing, the PTO will not provide it together with the rest of the specification. From discussions with USPTO officials, the origin of the problem is that sequence listings are in a separate database, and requires the generation of separate certified documents. If a sequence listing is too large to print out, USPTO rules require that the it be burned to CD (37 CFR 1.19(b)(3). MPEP § 1730). However, the PTO will not burn a CD containing both the sequence listing and the main body of the specification.
• A further complication is that the certification of the main body of the specification can be provided with the CD. With the sequence listing, the certification must be on paper, and cannot also be on the CD.

Thus, a request for a certified copy of a priority application with a sequence listing generates two CDs, with two different methods of certification. A foreign patent office, or court, might question whether the sequence listing was part of the priority application at the time of filing, or whether the provision of two separate "certified" documents complies with the formal requirements of providing a certified copy of the priority document. Indeed, European counsel we spoke with were unaware that the USPTO does not provide a copy of the sequence listing with the certified copy of the specification, or on a separate CD or print out.

There Is a Work-Around, But It Creates Other Problems

The origin of this problem is that electronically filed sequence listings are stored in a separate database from the specification. The electronic copy of the sequence listing is loaded as a .txt file, stored in a separate database, and classified on PAIR as "supplemental content." Although a paper or PDF copy of a sequence listing filed with the priority application would be stored with the "main" body of the specification, the USPTO (and EPO) no longer require paper or PDF copies of sequence listings. Rather, the electronically submitted .txt file is the formal sequence listing submission. This practice saves the USPTO from unnecessary duplication, and spares applicants the excess page fees that could be incurred if a paper or PDF sequence listing were filed. Thus, the electronic submission of sequence listings saves time and money for both the USPTO and applicants.

This win-win policy is undermined by the USPTO's practice of providing certified copies of the sequence listing separately from certified copies of the main specification. As explained above, this practice raises questions and concerns when filing internationally. The only immediate solution for applicants is to file a paper sequence listing along with the .txt file, possibly incurring excess page fees and inundating the PTO with unnecessary documents. We recently alerted USPTO managers to this problem, but it will require more senior officials to make the policy changes and implement the technology improvements required to fix it.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.