Can Post Filing Data Overcome Inventive Step in China?
Since 2010, the Patent Re-examination Board (PRB) has published the top 10 patent invalidation cases of the year in April of each year. The selection criteria are high social concern, significant impact on the related industry, or involve difficult legal issues and important examination criteria. Below is one of the top 10 cases that discusses post filing data in China patents.
Post Filing Data in China
Can post-filing data showing unexpected technical effect be used to overcome inventive step if the specification contains no data but asserts the unexpected technical effect?
In short, the answer is no, post-filing data cannot be used to overcome inventive step even if the idea was asserted if the original data was not in the application.
Novartis’s Chinese patent (201110029600.7) claimed the combination of AT 1-antagonist valsartan and NEP inhibitor Sacubitril. The specification asserted that the combination of the two drugs had synergistic effect, yet provided no data at the time of filing.
The PRB sided with petitioner Dai Jinliang and argued that one of skill in the art could not predict that the combination would be synergistic without experimental data. In other words, applicants had not solved the technical problem of providing a pharmaceutical combination with synergistic effects. At most, applicants had provided a pharmaceutical composition for treating hypertension. In January of 2018, the PRB declared that the Novartis patent was invalid.
In our experience, if experimental data is in the application as filed but another piece of prior art is cited during prosecution, the applicant may submit post-filing data showing results of comparison studies with the newly discovered art, provided that the original data for applicant’s invention was already disclosed in the application as filed.
About the Author
Jennifer Che, J.D. is a US Patent Attorney and Vice President and Partner at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.[email protected]This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
Other Articles
Can I transfer priority rights in China without the consent of other applicants? Insights from the Broad Institute’s CRISPR patent
4 February 2025
The high-profile disputes surrounding an important CRISPR patent belonging to The Broad Institute, MIT and Harvard (hereinafter “the proprietors”) has attracted a lot of attention in recent years, particularly regarding the validity of priority rights that were challenged worldwide. In Europe, the patent was famously revoked by the European Patent Office (hereinafter “EPO”) due to […]
Read more >
Amendments to the China Patent Examination Guidelines in 2022 - Part 1: New rules for designs in view of China signing onto the Hague Agreement
2 December 2022
This year, China stepped further onto the international scene by signing on as a member of the Hague Agreement. The Hague Agreement is an international registration system allowing applicants to file a single international design application in a single language to obtain protection in over 100 designated member countries. The US has been a member […]
Read more >
BREAKING NEWS: New Pilot Program for Hong Kong Applicants to get Accelerated Patent Examination in the Chinese Patent Office Starting January 1, 2023
4 January 2023
New year, new resolutions! The CNIPA has recently announced a pilot program that provides Hong Kong applicants the opportunity to expedite their patent applications filed in China. Starting 1 Jan 2023, Hong Kong permanent residents and entities legally registered in Hong Kong can request prioritized examination for their invention patent applications before the CNIPA. To […]
Read more >
How Smart is a "Skilled Person in the Art"?
11 April 2022
Let’s start with a riddle: can you name a person who has read every book, every journal, conducted every known experiment, and is knowledgeable about every single patent prosecution / litigation in the world? The answer? A “skilled person in the art.” This person is also known as a “person having ordinary skill in the […]
Read more >
Our Past Events
Pauli Wong gave a talk at Hong Kong Life Sciences Society (HKLSS)
10 October 2026
BioHK2026 | Biotech IP in practice
16 September 2026
Jennifer Che Once Again Named to the IAM Strategy 300
21 August 2026
Yolanda Wang attended the 1st China Pharmaceutical Innovation Conference
22 July 2026
Pauli Wong as a Guest speaker for “Entrepreneurial Workshop” in Poly U
16 June 2026
Eagle IP Recognized as Top Tier Firm (Tier 1) for Patent Prosecution in IP Stars 2026 Patent Firms Ranking List
