Whether sufficient disclosure is well done in the specification will be based on the originally or initially disclosed content in the claims and description including the drawings in the patent application. In the current Guidelines, the supplementary date particularly pharmaceutical-related patent in in after the filing date will be actable or considered by the examiner. But, when the data supplemented for a technical effect within the disclosed content of the patent application could be obtained by a person skilled in the art, such data should be examined now.
In Chapter 10, Section 3.4 (2), it is said that “whether or not the description is sufficiently disclosed is judged on the basis of the disclosure contained in the initial description and claims, any embodiment and experimental data submitted after the date of filing shall not be taken into consideration”.
In order to change the current situation, the wordings about the supplementary data in the Guidelines will be further clarified and amendment will be made. The following wordings will be suggested as “For the data supplementary after the date of filing, it must be examined by examiner. The data supplementary to confirm the technical effect must be obtained by a person skilled in the art within the content disclosed in the patent application”.
The drafted amendment to “Guideline for Patent Examination” in China is open to the public on 27 October 2016.
GE CHENG & CO