In the latest revision of the Guidelines for Patent Examination, some amendments are made about the submission of supplementary experimental data. Particularly, “any embodiment and experimental data submitted after the date of filing shall not be taken into consideration” is amended to “the examiner shall examine the experimental data submitted after the date of filing. The technical effects proved by the supplementary submitted experimental data shall be obtainable by those skilled in the art from the content of the disclosure of the application”.
It seems a substantial change from its literal expression: before the revision, the experimental data submitted after the date of filing shall not be taken into consideration, but after the revision, the examiner shall examine it. However, the revision does not actually influence the substantive examination so much.
In the patent examination practice, usually an applicant might consider submitting a supplementary experimental data when facing the following two objections. The influence on the patent practice will be analyzed in the following in the two aspects.
1. Regarding Inventiveness
Actually, before the above revision is made, in the Chinese patent practice, a supplementary experiment data, esp. a comparative experimental data according to the reference cited in the office action, could be submitted in the response to the objection of inventiveness, and it will be examined by the examiner. If the data could prove that the invention has unexpected technical effects over the cited reference, the examiner might accept the argument of inventiveness by the consideration of the comparative data.
After the above revision of the Guideline, the principle of examination to such experimental data does not change. The examiner will examine the experimental data and might accept the corresponding argument if it could prove the unexpected technical effects thereof. It should be noticed that a requirement shall be met both after and before the revision: the technical effects proved by the supplementary experimental data shall be obtainable by those skilled in the art from the content of the disclosure of the application. The only difference is that the expression after the revision is more definite. Such a requirement is to meet the demand of the first-to-file principle. The supplementary experimental data submitted later should have internal relation with the initial disclosure, that is, the technical effects thereof should be obtainable from the initial disclosure.
2. Regarding non-sufficient disclosure and non-support objections
Before the revision, it is not acceptable to supplement examples and experimental data to the description. After the revision, although such experimental data will be examined, it will not be acceptable officially since the examples and experimental data supplemented for the defects of non-sufficient disclosure and non-support usually cannot meet the requirement of “the technical effects proved by the submitted supplementary experimental data shall be obtainable by those skilled in the art from the content of the disclosure of the application”. Therefore, it still could not be accepted.
For example, the examiner indicates that the disclosure of the initial description is not sufficient, the description sets forth a concrete technical solution but without experimental evidence, while the technical solution can only be established upon confirmation by experimental result. In this case, even if the applicant supplementarily submits corresponding experimental data after the examiner indicates the defect and the supplementary experimental data can prove its effects, such experimental data will not be accepted by the examiner since the effects cannot be obtained from the initial disclosure.
It is easy to understand since the basis of the patent law is using technology disclosure for legal protection. Under the condition that the applicant does not disclose the technology completely on the filing date, even if the experimental data is submitted after the filing date, legal protection should not be provided for the technology. Otherwise, it will hurt the benefit of the public. In view of the above, this revision actually only makes some modification to the literal expression to avoid misunderstanding from the international, and the principle of the examination does not change. In deed such principle is in conformity with the common international principle. In America, it is required that the technical effects proved by the supplementary experimental data shall have basis in the initial specification. In Europe, the technical effects proved by the supplementary experimental data shall be implied in the initial application or shall be in relation to the technical results of the initial disclosure.