• Attention Biotech Patentees: Revised Sequence Listing Requirements in Effect before the Canadian Intellectual Property Office (CIPO)
  • February 11, 2016 | Author: David E. Schwartz
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Ottawa Office
  • CIPO has adopted a practice whereby, upon entry of a PCT application into the Canadian national phase, CIPO will obtain the sequence listing directly from WIPO, if it was filed as part of the international application in electronic form. This should simplify national phase entry in Canada.

    The Canadian Patent Rules provide that a sequence listing in electronic form shall be filed if a patent application contains disclosure of an unbranched sequence of ten or more nucleotides or an unbranched sequence of four or more amino acids, other than a nucleotide or amino acid sequence identified as forming part of the prior art.

    The sequence listing must comply with the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications Under the PCT provided for in Annex C to the Administrative Instructions under the PCT (the “PCT sequence listing standard”).

    In the case of a Canadian PCT national phase application, to avoid a CAD $200 completion fee, this requirement must be met before the expiry of three months from the date of national entry in Canada. If CIPO identifies defects in a sequence listing filed before the deadline, and a corrected sequence listing is submitted after the deadline, CIPO requires payment of the completion fee.

    Before this change in practice, Canadian agents were normally required to file a copy of the sequence listing together with a request for national phase entry. This change in practice may obviate the need for an applicant to now take any further steps in respect of the sequence listing in the Canadian national phase.

    Accordingly, in order to minimize the steps required to complete Canadian PCT national phase filings, ideally a sequence listing in electronic form, complying with the PCT sequence listing standard, will be filed as part of the international application.