Case study: A successful example of post-filing data to address the support issue under China patent practice


China previously applied stricter criteria for post-filing supplementary data during the examination of patent application, compared to other major patent systems. However, with the recent signing of an Economic and Trade agreement between the United States Government and the PR China, the China National Intellectual Property Administration (CNIPA) has made several rounds of revisions to the Guidelines for Patent Examination. As a result, the current post-filing data examination criteria is now more consistent with the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), marking a significant step forward in harmonising global patent practices.

However, this progress is linked to post-filing data that is intended to address inventive step and sufficient disclosure (such as enablement). When it comes to support issue, no specific provision is provided under China local practice. A widely accepted view is that it is challenging to tackle non-support issues using post-filing data. Regardless, it’s recommended that an attempt should be made for the applicant if necessary, despite all the challenges. Here we outline a recent successful example.

The example Application is a China national phase application of a PCT application, seeking to protect a compound with a general formula, which is generalised based on the chemical structures shown in a figure. The Chinese Examiner raised a support issue (i.e. not being supported by the description) due to the compounds only being identified with abbreviations in the working examples, without specifying their chemical identity, or chemical structures.

To address the issue, the applicant submitted an article published by the inventor after the priority date of the example application, aiming to clarify the correspondence between the specific compounds shown in the figure and the abbreviations used in the examples. However, the article was not accepted by the Examiner, as it was published after the priority date and there was no direct corresponding information recorded included.

While the example case seems to reach an impasse, we believed it was unfair for the Applicant to not be allowed simply because abbreviations were used in the examples.

We took further action. We requested the Applicant to provide a declaration to confirm that the submitted article discussed the same subject matter with the present application and obtained the same results, and that the abbreviations used in the examples indeed corresponded to those specific compounds shown in the figure. At the same time, we discussed with the Examiner the technical contribution made by the present application. Through the extensive experimental works conducted in the present application, and also recorded in the previously submitted article, it cannot be denied that the Applicant makes great technical contribution to the prior art, i.e., providing effective compounds that are effective for cancer treatment. Such technical contribution should not be ignored/unrewarded, especially considering the spirit of “encouraging inventions-creations” as prescribed by Article 1 of the Chinese Patent Law. After further consideration and discussion within the team, the Examiner granted the example Application.

From the prosecution of the above example, it can be seen that post-filing data, under certain circumstances, would also work for addressing the support issue under China local practice, together with solid additional supporting analysis. Ultimately, the essence of patent-system involves exchanging of technical solution disclosure for patent right, and matching patent protection scope with technical contributions by the Applicant, which should always be considered.

If you are facing a similar issue, please get in touch with our expert team to discuss how we can help.

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