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.
其他文章
Diagnostic Claims in China
2020年1月9日
The Chinese Patent Law excludes patenting methods of diagnosing or treating a disease. More specifically, this refers to processes of identifying, determining, or eliminating the cause or focus of diseases which are practiced directly on living human or animal bodies. Please keep in mind that instruments used for implementing these methods are still patentable. So […]
閱讀更多 >
Patent Eligibility for Software in China
2022年4月4日
Technology has progressed significantly since the early days of patent law, when US lawmakers in 1952 could only envision patentable subject matter into categories like “process, machine, manufacture, or composition of matter.” The recent explosion of new types of innovations that don’t fall neatly into these categories has resulted in a game of catch-up, where […]
閱讀更多 >
China Proposes New Examination Guidelines for Utility Models
2022年11月24日
The Utility Model (UM) in China has always been a popular choice for patent filing due to its relatively low cost and speed of prosecution. The UM prosecution only includes a preliminary examination, which is essentially a mini (stripped down) version of an invention application’s substantive examination.1 With the simplified examination process, UMs are typically […]
閱讀更多 >
A Detailed Dive into China’s New Patent Term Extension Provisions
2020年12月11日
This article is a part of a larger article that highlights the newest draft implementation rules of the new Chinese Patent Law. This particular article takes a detailed dive into the patent term extension/adjustment provisions. One of the biggest and most exciting provisions in the newly amended patent law is patent term extension for delay […]
閱讀更多 >
我們過去活動
Dr. Jacqueline Lui, Ms. Pauli Wong, and Mr. Eddie Ho Named Patent Stars by ManagingIP
2025年6月13日
Eagle IP Ranked Among Top Tier Firms in IAM Patent 1000
2025年6月12日
Jennifer Che from Eagle IP to Attend BIO 2025 in Boston!
2025年6月11日
Insights from HKSTP Market Discovery - BIO Connect
2025年5月28日
HKMHDIA Medical Fair Forum
2025年5月27日
Celebrating Innovation at the Asia Summit for Global Health