Notice the practice changes
As for an invention of a chemical product or use thereof, the Guidelines for Patent Examination stipulate the strict requirements for enablement, especially, the requirements for experiment data to prove that the technical solution can achieve the claimed technical effect.
In the past, any late filed experiment or data would be ignored from consideration if used for addressing non-enablement issues, and our arguments against the non-enablement rejection should be made on the basis of the original disclosure of the application and the general knowledge in the prior art. However, we note that the practice is changing now and in some cases the examiners have accepted the supplemental experiment data which may help to overcome the non-enablement rejections.
Communicate with SIPO examiners
The Patent Examination Cooperation Center of the Patent Office, SIPO (Beijing) visited Liu, Shen & Associates on May 28, 2014 to have a meeting with our patent attorneys to discuss patent examination practice. During the meeting with the examiners, we notice the following changes on examination:
- The supplemental experiment data may be considered as evidence to prove whether the technical solution has the claimed use and/or effect. The examiners shall determine whether the whole disclosure can convince a person skilled in the art that the invention has achieved the technical effect described in the description, in view of the prior art and/or other evidence, including the supplemental experiment data.
- The examination shall be more focused on patentability issues, rather than enablement and support issues. Especially, occurrence of rejections based on enablement and support issues shall be reduced.
- The examiners shall adopt normal standards on inventive steps, no matter whether the requirements for enablement are met or not. And the experiment data compared with the prior art can be submitted as evidence to prove the unexpected technical effect.
Due to the above changes, the supplemental experiment data, if available, either in terms of enablement and support issues or in terms of inventiveness issues, are encouraged to be submitted during the substantive examination. In order to make the supplemental experiment data more creditable, it is advisable to proceed the notarization and legalization procedures, if they are obtained outside China.
In addition, if the supplemental experiment data are obtained from the experiment conducted before the filing date or priority date, the relevant evidence such as the original records of the experiment can be submitted simultaneously.