[author: Walker Shi]

In recent years, post-filing supplementary experimental data has become a very hot topic in Chinese patent practice. It is attracting much attention from IP practitioners around the world.

The Chinese Patent Examination Guidelines stipulate that the examiner shall examine the experimental data submitted after the filing date. The technical effects proved by the supplementary experimental data should be those which can be obtained by a person skilled in the art from the original disclosure of a patent application.

In accordance with the Chinese Patent Examination Guidelines, examiners should examine supplementary experimental data during prosecution rather than just refusing to accept them. This means patent applicants have greater opportunities to secure their patent rights than before. Accordingly, the form of supplementary experimental data is of great concern to many IP peers.

Taking obviousness as an example, to demonstrate the present patent application has outstanding technical effects over the prior art, such as D1, we can repeat the whole process of the example of D1 and measure the corresponding parameters of D1 by using the measurement of our patent application. As a result, we can obtain supplementary experimental data about D1.

And then, in the above way, we can decide which one is better based on a comparison between the technical effects of the present patent application and those of D1, in a bid to prove that the present patent application has better or even much better technical effects compared to D1. According to practice, the above way of providing supplementary experimental data is generally accepted by Chinese examiners.

Depending on the circumstances, approval is also possible for other forms of supplementary experimental data. And, from our experience, examiners are more likely to examine all kinds of supplementary experimental data regardless of the technical field.

However, it is still necessary to advise that patent applicants should file original experimental data as much as possible. Examiners’ opinions vary on whether to accept the supplementary experimental data, and some may refuse to do so because they believe these data lack basis in the original disclosure.

In this regard, a good strategy is to include enough experimental data in the original patent application to demonstrate how prominent effects the patent application has already had. In case the examiner is not convinced of the patentability of the patent application during prosecution, we can provide supplementary experimental data based on the cited prior art. 

In summary, putting full use of supplementary experimental data will be helpful in arguing the inventiveness of chemical patent applications in China.