Supplementary Experimental Data under the Revised Patent Examination Guidelines

The latest revision to the Guidelines changes the treatment of supplementary experimental data. The previous statement that embodiments and experimental data submitted after filing would not be considered is replaced by a requirement that examiners examine post-filing experimental data. The technical effects demonstrated by that data must be obtainable by a person skilled in the art from the application’s original disclosure.

The wording suggests a substantial change: previously the data would not be considered, whereas now it must be examined. In practice, however, the effect on substantive examination is more limited. Applicants commonly submit supplementary data in response to two types of objection, considered below.

1. Inventiveness

Even before the revision, Chinese practice allowed supplementary experimental data, particularly comparative data addressing a cited reference, to be submitted in response to an inventiveness objection. Examiners would consider the data and might accept an inventiveness argument if it demonstrated unexpected technical effects over the cited reference.

This examination principle remains unchanged. The examiner considers the data and may accept an argument based on unexpected technical effects. Both before and after the amendment, however, those effects must be obtainable by a person skilled in the art from the original disclosure. The revised wording makes this requirement explicit. It reflects the first-to-file principle: later data must have an inherent connection with the original disclosure, and the effects must be derivable from that disclosure.

2. Insufficient Disclosure and Lack of Support

Before the revision, applicants could not remedy these deficiencies by adding examples and experimental data to the description. Although post-filing data must now be examined, data intended to cure insufficient disclosure or lack of support will generally remain unacceptable because it does not meet the requirement that the demonstrated effects be obtainable from the original disclosure.

For example, the original description may set out a specific technical solution without experimental evidence, where that solution can be established only by experimental results. If the examiner identifies insufficient disclosure, later data proving the effects will still not be accepted where those effects cannot be obtained from the original disclosure.

Patent protection is granted in exchange for disclosure. If the technology was not fully disclosed at filing, later experimental data should not confer protection that would harm the public interest. The revision principally clarifies the wording to avoid international misunderstanding; it does not alter the underlying examination principle. That principle is consistent with international practice. In the United States, the effects shown by supplementary data must have a basis in the original specification. In Europe, those effects must be implicit in the original application or related to the technical results originally disclosed.