Different from the technical field of machinery, computer programs, communications, etc., chemistry is an experimental science. In the field of chemistry, the technical effects of new compounds can only be obtained if experimental verifications are made. Therefore, in chemical patent applications, the experimental data is an important part. Whether the patent application involves a new use of a pharmaceutical product, the ingredients of a new compound or a new reagent formulation, a large amount of experimental data is required to be contained in the description of the patent application, so as to verify that the claimed technical solution achieves the corresponding technical effects.
Moreover, issues relating to the experimental data are also a significant reason that can lead to the final rejection of chemical patent applications. In the procedure of substantive examination, even if the examiner deems that the patent application has novelty and inventive step, the patent application might be rejected due to the description not providing sufficient experimental data.
On the basis of the foregoing considerations, generally, when drafting chemical patent applications, it is necessary to provide corresponding experimental data as support for any component content mentioned in the claims. For example, if it is mentioned in the claims that the content of substance A is 0.5-2 wt%, then, at the least, the experimental data with the content of substance A being 0.5% and the experimental data with the content of substance A being 2% need to be provided in the description. As to another example, if a carboxyl group-containing compound B is provided in the claims in the manner of a Markush structure, then experimental data of at least three different formulae of the carboxyl group-containing compound B need to be provided in the description.
Hence, a patent attorney usually advises the inventor to provide a plurality of experimental designs and a large amount of experimental data, so as to avoid a rejection based on Article 26, item 4 raised by the examiner while maintaining a relatively larger scope of protection. In general, such experimental data may include the experimental conditions, the experimental processes, the source of experimental samples and the experimental results. Such experimental data are all considerably beneficial in respect of patent application drafting.
However, from the perspective of the applicant, the detailed experimental data, such as experimental conditions and the experimental processes, are not only the experimental data for the patent application, but more likely relate to the business secrets of the enterprise. Especially for process-based patent applications, the configuration of experimental parameters and technical parameters may be a result of experience accumulation by enterprise researchers and developers over many years. This know-how is an important aspect of the competitiveness of the product.
Therefore, for the applicant, it is essential to protect the product by means of submitting a patent application; however, it is more important to determine whether the formula of the product or the process flow of the product preparation involves a business secret. Protection methods of business secrets are not the same as patent protection methods. If the essence of the patent could be described as "obtaining the protection by publishing the technical solution", then the business secret might be described as "obtaining the protection by not publishing the technical solution".
Business secrets are generally used to protect business information about the most core advantages, such as key technical points, for the enterprise. For business secrets, severe confidentiality measures are usually taken inside of the enterprise to prevent business secrets from leaking. However, once a business secret has leaked, the technical advantages accumulated over the years of an enterprise may vanish, and thus the enterprise might lose any competitive advantage.
Therefore, when drafting a patent application, the patent attorney should cooperate with the researchers, so as to determine which experimental data may relate to the business secrets of the enterprise and cannot be disclosed, and which experimental data is indispensable for the technical solution claimed by the patent.
For example, for a process patent application that relates to adding a new process step A to a traditional material treating method, and process step A comprises treating material D with a solution C’ containing substance B, wherein solution C’ is a modified solution by improving the traditional solution C, the traditional solution C may be a commercially available solution C produced by other manufacturers, and may also be a solution C continuously sold by the applicant. After the patent attorney confirms that the core content of the technical solution with the researcher is the solution C' containing substance B, the patent attorney may confirm that the experimental data relating to substance B and material D is indispensable. Meanwhile, if the researcher confirms that the solution C used in the R & D process is manufactured by the applicant, occupies a leading place in the market, and is an important product of the enterprise, the specific ingredients of solution C’ may be described as the commercially available solution C and substance B, without having to disclose the specific ingredients of the solution C manufactured by the applicant. Once the specific components of solution C are disclosed, the patent application cannot obtain any contribution from that in regard to the inventive step of the patent application, it is also highly possible that the technical experience of the applicant will be disclosed over the years, thus resulting in the loss of business secrets.
The foregoing is merely a simple example. In the procedure of drafting a specific patent application, the patent attorney will face many situations that are difficult to determine in view of the complex experimental data. In this case, the patent attorney should communicate sufficiently with enterprise developers in order to confirm the particular technical solutions that need to be claimed, the necessary experimental data and the business secrets that may be involved. In this way, the business secrets of the enterprise will not be leaked and no economic loss of the enterprise will be incurred.