Supplementary Experimental Data for Chemical Patent Applications in China

As we all know, in the patent application documents for inventions or utility models, it is necessary to clearly indicate the technical problems to be solved, the technical solution to solve the technical problems and the beneficial effects of the technical solution by comparison with the prior art. Among them, the beneficial effect is an important basis for determining whether the invention has "notable progress" and whether the utility model has "progress". Because chemistry is an experimental subject, the proof of its beneficial effects requires the use of experimental data in most cases. At the same time, the experimental data is also the proof data of whether the patent application description in the chemical field is fully disclosed. Therefore, experimental data occupies a very important position in the application documents in the field of chemistry.

In the process of patent examination in the field of chemistry, there will be problems pointed out by the examiner that the patent application has no beneficial effect or the description is not fully disclosed compared with the prior art. In this case, if the applicant thinks it is necessary to prove it through experimental data, he may first consider adding experimental data to overcome the problems pointed out by the examiner. However, under the China patent system adopting the first application system, adding experimental data is not allowed by the Patent Law, that is, it is not in conformity with the provisions of Article 33 of the Chinese Patent Law that " the amendment to the application for a patent for invention or utility model may not go beyond the scope of the disclosure contained in the initial description and claims ", and it has also been clarified in several versions of the Examination Guidelines over the years that adding experimental data to illustrate the beneficial effects of the invention is an impermissible amendment.

Although the experimental data cannot be supplemented into the description, in order to overcome the above problems, the applicant can prove the beneficial effect of the invention or the full disclosure of the description by supplementing the experimental data. As can be seen from the Patent Examination Guidelines over the years, different explanations are given for supplementary experimental data in different periods. For example, in the 2001 edition of the Examination Guideline, it is allowed to supplement experimental data for the examiner's reference when examining novelty, inventiveness or practicality; In the Examination Guideline for the 2006 and the 2010 editions, it deleted the provisions in the 2001 edition, and at the same time added "to judge whether the description is fully disclosed, the contents recorded in the original description and the claims shall prevail, and the examples and experimental data submitted after the application date will not be considered"; In the 2017 and 2021 editions of the Examination Guideline, it deleted "the examples and experimental data submitted after the application date will not be considered", and added "the examiner should examine the experimental data submitted after the application date, but the technical effect proved by the supplementary experimental data should be obtained by those skilled in the art from the contents disclosed in the patent application". Although there are different expressions in the supplementary experimental data in the Examination Guideline over the years, it can be seen in combined with practical operation that the examiner will refer to and examine the supplementary experimental data to overcome the inventive defects and insufficient disclosure, but whether the supplementary experimental data can play a positive role in overcoming the examination opinions depends on the specific case analysis.

As for a patent application that wish to overcome the above-mentioned defects by supplementing experimental data, it is a basic requirement that the technical effect proved by supplementary experimental data can be obtained from the contents disclosed in the patent application, and in order to prove that the technical effect “can be obtained from the contents disclosed in the patent application”, it suggests that the applicant, while submitting supplementary experimental data, fully state that from the perspective of those skilled in the art at the time of application, based on the disclosed contents of patent application and in combination with common knowledge in the art, the technical effect to be proved by supplementary experimental data is consistent with the technical effect recorded in the original application description, so that the supplementary experimental data can play a positive role in overcoming the examination opinions as much as possible..