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
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 >
Major and Exciting Changes to China’s Patent Law [Fourth Amendment to China's Patent Law]
20 February 2019
Major changes are on the horizon for China’s Patent Law, which will see an overhaul in many areas as early as this year (2019). On January 4, 2019, the National People’s Congress in China published the latest draft of the Fourth Amendment to China’s Patent Law. Several draft amendments have been released for public comment […]
Read more >
CNIPA further clarifies how it counts “delays” when calculating Patent Term Adjustment (PTA) in the new Draft Examination Guidelines and how it affects international applicants
12 April 2023
At the end of October 2022, the China National Intellectual Property Administration (CNIPA) released a new draft amendment of the Patent Examination Guidelines1 (hereinafter referred to as the “New Draft”) to the new Chinese Patent Law that came into effect in 2021. We highlight two key amendments below. 1. The starting date for calculating PTA […]
Read more >
2019 CHINA TOP 10 IP CASE: VALEO V. LUCAS, FUKE, & CHEN
8 June 2020
Every year in the spring The Supreme People’s Court of PRC announces its “Top 10 Intellectual Property (IP) cases” and “50 typical IP cases in Chinese courts” of the year. Although not having precedential weight, these cases serve as a reference and guide people's courts at all levels regarding their intellectual property trials. It’s always […]
Read more >
Our Past Events
Eagle IP to Participate in AIPLA 2026 Spring Meeting in San Francisco
8 May 2026
Eagle IP has been named as the Winner of the LSPN Cross-Border Collaboration Partner of the Year Award at the LSPN Awards USA 2026
8 May 2026
Eagle IP to Attend INTA 2026 Annual Meeting in London
2 May 2026
Eagle IP’s Jennifer Che to Attend LSPN North America Spring 2026 in Boston
29 April 2026
Pauli Wong to Share IP Strategy Insights at HKLSS Entrepreneurship Series 2026
25 April 2026
Eagle IP and HKSTP Host AIPLA Women in IP Global Networking Event
