4.7.9 Sufficient disclosure of the description
Article 26 paragraph 3 of the Patent Law stipulates the following: “The description shall contain a clear and comprehensive description of the invention or utility model so that a person skilled in the relevant field can carry it out.” In judicial practice, this requirement for the description is generally referred to as “sufficient disclosure.”
126.96.36.199 Relevant provisions in the Provisions on Patent Grant and Confirmation
Article 6 paragraph 1 of the Provisions on Patent Grant and Confirmation stipulates the following:
Where the failure to sufficiently disclose specific technical content in the description results in any of the following circumstances on the filing date, the people’s court shall determine that the description and claims relating to the specific technical content fail to comply with paragraph 3, Article 26 of the Patent Law:
- (1) The technical solution specified in the claims cannot be implemented;
- (2) The technical problem of the invention or utility model can’t be solved by implementing the technical solution defined in the claims; and
- (3) To determine whether the technical solution defined in a claim can solve the technical problem of the invention or utility model, excessive work is indispensable.
Where specific technical content is not sufficiently disclosed in the description, the people’s court will determine that the specific claims related to the specific technical content violate the provisions of Article 26 paragraph 3 of the Patent Law rather than generally determining that the entire patent or all claims do not comply with those provisions.
Regarding supplementary experimental data, Article 10 of the Provisions on Patent Grant and Confirmation stipulates the following: “Where a pharmaceutical product patent applicant submits supplementary experimental data after the filing date to prove that the patent application is in conformity with paragraph 3, Article 22 and paragraph 3, Article 26 of the Patent Law, among other provisions, the people’s court shall examine the data.”
188.8.131.52 Relevant typical cases
Regarding the relationship between the inventiveness and the sufficient disclosure of the description, in an appeal of an administrative dispute over the reexamination of the rejection of an invention patent, China National Intellectual Property Administration v. Erasmus University Medical Center,156 the Supreme People’s Court held that the two have different functions in patent law and follow different logics. In principle, what should be examined under the legal requirements of sufficient disclosure should not be taken into consideration in the assessment of inventiveness.
With regard to the sufficient disclosure of the description of a compound product invention, in a retrial of an administrative dispute over the invalidation of an invention patent, Patent Reexamination Board v. Warner-Lambert Co.,157 the Supreme People’s Court held the following:
- To comply with the provisions of Article 26 paragraph 3 of the Patent Law, all three requirements – that the specified technical solution can be implemented, that the technical problems can be solved and that the expected results can be produced – must be met at the same time. The people’s court shall first determine whether a person skilled in the relevant field of technology can implement the technical solution according to the content disclosed in the description. It will then determine whether the technical problem can be solved and whether the desired technical effects are produced. It is pointless to confirm, before determining whether the technical solution can actually be implemented, whether the technical solution can solve the corresponding technical problems and achieve the technical effects in comparison with the prior art.
- The identification, manufacture and use of the chemical product shall be recorded in the description of the chemical product invention.
If the invention is a compound, the description must state the chemical structure of the compound and the chemical and physical performance parameters related to the technical problem to be solved by the invention so that a person skilled in the relevant field of technology can clearly identify the chemical product based on that description.
Regarding the determination of sufficient disclosure regarding a product invention in the field of chemistry, in a retrial of an administrative dispute over the reexamination of the rejection of an invention patent application, Mitsubishi Tanabe Pharma Corp. v. Patent Reexamination Board,158 the Supreme People’s Court held that the requirements for the disclosure of the uses and effects of such inventions are determined by the characteristics of inventions in that field. In most cases, it is difficult to predict, without experimental evidence, whether a chemical invention can be implemented and what uses or effects it has. Therefore, where a person skilled in the relevant field of technology would not be able to predict, based on the prior art, whether a novel compound has the uses or effects described in the description, the patent description must specify the qualitative or quantitative experimental data showing that the compound can achieve the stated uses or the expected effects.