If nucleotide or amino acid sequences are disclosed in a European patent application, the description – according to Rule 30 (1) EPC – has to contain a sequence listing. Pursuant to Article 1 (1) of the decision of the president of the EPO dated 28th of April 2011 the sequence listing has to be submitted electronically in a format which corresponds to the internationally accepted WIPO-standard ST.25.
The sequence listing can be filed after the application date if a late furnishing fee is paid. The requirement to pay such fee is particularly annoying, if the application actually does not disclose new sequences but merely refers to prior-art sequences specifying the data base access numbers, while the EPO in practice still insists on an according sequence list (and on the payment of a late furnishing fee).
In view of the expenses of an appeal, affected applicants usually prefer to file the sequences which are easily obtained from public data basis (also for the EPO) and to pay the comparatively inexpensive late furnishing fee.
So much the better is the fact that recently an affected applicant filed an appeal. In the consequent board of appeal decision J 8/11 of January 30th, 2013 it was clarified that this EPO practice is not justified.
The decision J 8/11 was based on a method claim comprising in a first step the determination of the amount of at least one biomarker known from prior art according to Table 1. Table 1 contained 27 biomarker proteins with their established names and data base accession numbers, but not the protein sequences on which those specifications are based (and which are insofar redundant).
In the decision J 8/11 the board of appeal acknowledged that there is no necessity for the subsequent submission of prior-art sequences, if said sequences (as in the present case) are clearly identified by their data base accession numbers. In view of the reason given in document CA/7/92 (which arose in preparation of Rule 27a introduced in 1993, being basically in accordance with present Rule 30 (1) EPC), only the originally wished new sequences (which are not comprised in the state of the art) can be demanded from the applicant.