Newsletter
ADMISSIBILITY OF SUPPLEMENTARY EXPERIMENTAL DATA FOR INVENTION PATENTS IN ADMINISTRATIVE PROCEEDINGS
In current patent practice, substantive examinations of patent applications by the National Bureau of Standards (NBS) include two stages: examination and re-examination. In principle, all issues concerning the technical contents and substantive examination should be fully addressed during these two stages. Once the NBS has rendered its re-examination decision, the applicant's only recourse for remedy is to pursue administrative appeal and administrative litigation.
In the past, government agencies hearing administrative appeals concerning patent applications would in principle limit the scope of their examination to the grounds of the original decision and the evidence adduced. If an applicant were to submit embodiments or experimental data not previously presented as proof of the efficacy of the invention, the agency hearing the appeal might reject the appeal directly on the grounds that the embodiments or experimental data were not submitted for examination by the agency that rendered the original decision, so they may not be admitted during appeal.
The Executive Yuan recently reversed such view by holding that experimental data in patent applications are just a form of evidence; that it is not required content under the Patent Law; and that there is nothing in the law to prohibit the submission of supplementary data by the patent applicant during administrative proceedings. Therefore, such data should be admissible, and applicant may refer to this holding when they argue for the admissibility of supplementary experiential data.