July 16, 2012
Via Email – seq_listing_xml@uspto.gov
Mail Stop Comments - Patents, Commissioner for Patents
Attn: Susan C. Wolski
Office of Patent Cooperation Treaty Legal Administration
Office of the Associate Commissioner for Patent Examination Policy
P.O. Box 1450
Alexandria, VA 22313-1450
RE: Request for Comments on the Recommendation for the Disclosure of Sequence Listings using
XML (Proposed ST.26)
Bristol-Myers Squibb Company (“BMS”) respectfully asks the United States Patent and
Trademark Office (“PTO”) to consider the following comments on the PTO’s proposal to revise the standard for
the disclosure of sequence listings from ST.25 to the XML standard and the consequent changes to the United
States rules of practice.
The PTO indicates that it prefers to have a clean transition from the current World Intellectual
Property Organization (“WIPO”) Standard ST.25 to the XML standard. The PTO proposes to accomplish this
transition by requiring all sequence listings filed for the first time in an application (including continuation,
continuation-in-part, and a divisional), at some future designated date (“XML Date”) to be filed in compliance
with the new XML standard.
However, it does not appear certain that a tool to convert a sequence listing from ST.25 to the
XML standard will exist at the time the rules will come into effect. Without such a conversion tool, patentees
would have to recreate their sequence listings presumably using the new XML software when filing sequence
listings in, for example, continuation applications. Not only does this create an undue burden and expense on
patentees by compelling them to recreate hundreds of sequence listings in XML format, but it also raises the
possibility that errors will be introduced into the converted XML sequence listing. Accordingly, in the absence of
a reliable conversion tool, BMS recommends that any sequence listing submitted in a patent application having a
priority date that predates the XML Date, may be submitted in either ST.25 or the XML standard, and that only
those applications that claim priority to a date subsequent to the XML Date will be required to utilize the XML
standard.
BMS appreciates the opportunity to provide its perspective on the PTO’s recommendation for the
disclosure of sequence listings using XML.
Respectfully submitted,
Brian J. Walsh
Senior Corporate Counsel
Bristol-Myers Squibb Company
Brian.Walsh@bms.com