T 3000/19 - Youtube as prior art (and possibly the EPO mainframe)

Key points

•  The application is refused as allegedly not novel or not inventive over a Youtube video. The Board concludes that the EPO's current way of " saving" video prior art (namely as a single print screen in a PDF file) is insufficient "for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings".
• " However, the web page corresponding to the URL indicated in the citation of document D4 is no longer functioning, so the board cannot assess on its own the relevant parts of the video evidence D4." 
• " Essentially the same situation was dealt with in appeal case T 3071/19 against the decision to refuse a parallel application of the same family as the current application. In that case, the decision to refuse the application was based on the same evidence D4 as in this case (D2 in that decision). As the responsible board explained in T 3071/19, Reasons 6, under these circumstances, the board cannot review the correctness of the contested decision's reasoning in so far as it relies on what is shown in the YouTube video evidence. Nor can the board assess the appellant's arguments that this online video is not an enabling disclosure and that there are further distinguishing features other than those recognised in the decision under appeal." 
• There is no copy of the youtube video in the file. 
• The reason is that the EPO is as of yet (2022!) only capable of storing black/white, "dead image"  PDF files in the prior art, as I understand it.
• For that reason, D4 is actually only a screenshot: " The document with the screenshot was annexed to the communication and is part of the electronic file. The reproduction of the screenshot is of poor quality, but the first video frame (with time stamp "0:00/1:21") can be seen. The document also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case." 
• As a comment, it is possibly interesting to learn from the EPO IT report 202 that "With regard to decommissioning the mainframe, progress was made by moving the PHOENIX image archive to cloud-native servers running an off-the-shelf image archive"  and "there is no place in the cloud-native world for 1970s technology, such as the mainframe"   (IT Report 2020, CA/40/21)
• 
  
• The Board holds the following on internet disclosures in general:" An internet disclosure may be regarded as part of the state of the art within the meaning of Article 54(2) EPC. However, examining divisions should make sure that an internet disclosure used as state of the art is reliable in terms of both the publication date (see decision T 1066/13, Reasons 4 to 4.3; see also the Guidelines for Examination in the EPO, G-IV, 7.5.1) and continued accessibility to its content in the version made publicly accessible on that date" 
• " Since the content on the internet changes over time, when "electronic evidence" such as an internet document or a video is used as prior-art disclosure against the patentability of an application, appropriate measures should be taken for collecting, storing and preserving this evidence and making it accessible under suitable conditions for the judiciary, or interested parties, for example, the applicant, an opponent, their respective representatives or a member of the public." 
• " In the current case, document D4 consisting of a screenshot (see point 4 above) included in the file is clearly insufficient for the judicial review of the decision under appeal. Furthermore, it is not apparent from the file whether the video's content has been collected, preserved and/or stored in a manner which guarantees accessibility for members of the judiciary or interested parties." 
• " The board could also not find publicly available information about whether and how, in proceedings before the EPO, the content of an internet video used as prior-art evidence in examination should be preserved and made accessible to external parties or the boards of appeal." 
• " With regard to the search report, the Guidelines for Examination (B-X, 11.6) indicate that video and/or audio media fragments available on the internet are converted into a non-patent literature citation, and that the bibliographic data contains the URL of the original location on the internet. At the time the decision under appeal was written, the Guidelines for Examination (November 2018, B-X, 11.6) further indicated that such fragments should be cited as a screenshot of the first page of the internet citation. In the present case, the non-patent literature citation is document D4 with a screenshot of the video. The examining division has thus followed the indications in the Guidelines." 
• " However, a number of screenshots taken from a video, let alone a single screenshot, fail to preserve in its original format the necessary video content to ensure that the video evidence required for review and public inspection is available later. Consequently, the procedure in accordance with the Guidelines for Examination, B-X, 11.6 is insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The board could not find any other passages of the Guidelines for Examination describing how to preserve the content of multimedia disclosure used as prior art in the proceedings before the EPO and to guarantee its accessibility for external parties or judicial bodies." 
• Let's hope the EPO will be able (and will) set up an archive for saving videos from the internet. 

EPO T 3000/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t193000eu1.html

Reasons for the Decision

1. The invention concerns a mobile wireless communications device and a method for searching data on data sources associated with registered applications.

2. The grounds for refusal of the decision under appeal are based on lack of inventive step when taking as starting point documents D4 and D5 "forming a single piece of prior art disclosing the use of 'Spotlight' on 'Mac OS X'".

Document D4

3. In the decision under appeal, the prior-art evidence cited by the examining division as "document D4" refers to a video titled "Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", retrieved from the YouTube website and, at the same time, a document including a screenshot of a web browser visiting that YouTube website.

4. The video of D4 was cited for the first time in the examining division's communication of 24 January 2018, which provided the URL for accessing the video on the internet (see section II. above). The document with the screenshot was annexed to the communication and is part of the electronic file. The reproduction of the screenshot is of poor quality, but the first video frame (with time stamp "0:00/1:21") can be seen. The document also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case.

5. The decision's reasoning refers to video frames at "0:00", "0:56", "1:02" and "1:11" and video frame sequences "0:29-0:52" and "0:59-1:02". However, the web page corresponding to the URL indicated in the citation of document D4 is no longer functioning, so the board cannot assess on its own the relevant parts of the video evidence D4.

6. Essentially the same situation was dealt with in appeal case T 3071/19 against the decision to refuse a parallel application of the same family as the current application. In that case, the decision to refuse the application was based on the same evidence D4 as in this case (D2 in that decision). As the responsible board explained in T 3071/19, Reasons 6, under these circumstances, the board cannot review the correctness of the contested decision's reasoning in so far as it relies on what is shown in the YouTube video evidence. Nor can the board assess the appellant's arguments that this online video is not an enabling disclosure and that there are further distinguishing features other than those recognised in the decision under appeal.

7. The board notes that in the novelty analysis of the impugned decision (point 3.4), in essentially the same way as in the communications since 24 January 2018, the examining division briefly described the content of some of the cited parts of video D4 and quoted one short sentence of the respective audio at "1:02". In its replies and in the grounds of appeal, the appellant provided comments on the video content and a few screenshots. This, however, does not provide sufficient information about the content of the video and does not allow the board to make its own assessment of the relevant evidence.

Internet disclosure as prior-art evidence

8. An internet disclosure may be regarded as part of the state of the art within the meaning of Article 54(2) EPC. However, examining divisions should make sure that an internet disclosure used as state of the art is reliable in terms of both the publication date (see decision T 1066/13, Reasons 4 to 4.3; see also the Guidelines for Examination in the EPO, G-IV, 7.5.1) and continued accessibility to its content in the version made publicly accessible on that date (see decision T 3071/19, Reasons 5; see also T 0013/20, Reasons 4).

9. Due account should be taken of the rights of third parties and the public to inspect the file under Article 128 EPC. Since the content on the internet changes over time, when "electronic evidence" such as an internet document or a video is used as prior-art disclosure against the patentability of an application, appropriate measures should be taken for collecting, storing and preserving this evidence and making it accessible under suitable conditions for the judiciary, or interested parties, for example, the applicant, an opponent, their respective representatives or a member of the public.

Use of electronic evidence in proceedings

10. In respect of the quite new field of electronic evidence, the Council of Europe has published guidelines on using electronic evidence in civil and administrative proceedings (see "Electronic evidence in civil and administrative proceedings - Guidelines and explanatory memorandum") adopted by the Committee of Ministers of the Council of Europe on 30 January 2019. Even though these guidelines and the explanatory memorandum are not binding on the EPO or the boards of appeal of the EPO, they provide important practical guidance about handling electronic evidence in the jurisdictions of member states.

10.1 The "Guidelines of the Committee of Ministers to member States on electronic evidence in civil and administrative proceedings" ("guidelines on electronic evidence", pages 5 to 11) and the explanatory memorandum (starting on page 13) concern the use of electronic evidence, including data from web pages (page 15, point 11). According to the explanatory memorandum, point 28, "electronic evidence, by its very nature, is fragile and can be altered, damaged or destroyed by improper handling or examination" and for these reasons "special precautions may be taken to properly collect this type of evidence".

10.2 It is stated, as a fundamental principle, that electronic evidence should be collected, structured and managed in a manner that facilitates its forwarding to other courts, in particular appellate courts. It "should be collected in an appropriate and secure manner, and submitted to courts using reliable services, such as trust services" and using procedures established by the member states for its secure seizure and collection (guidelines on electronic evidence, points 10, 11 and 14).

10.3 Furthermore, electronic evidence should be stored with standardised metadata so that the context of its creation is clear and the integrity of the evidence is preserved. Readability, integrity and accessibility should be guaranteed over time (guidelines on electronic evidence, points 25 to 27; exploratory memorandum, points 26, 37 and 44 to 46). Courts are advised, through active management, to restrict the electronic evidence to what is strictly required for deciding a case. It is also recommended that electronic data be retained in its original format. A screen printout from a web browser is not considered reliable evidence as it is nothing but a copy of a screen display which can be modified in a very simple manner (exploratory memorandum, points 27, 29 and 35).

Use of online video evidence in the EPO - prior art D4

11. In the current case, document D4 consisting of a screenshot (see point 4 above) included in the file is clearly insufficient for the judicial review of the decision under appeal. Furthermore, it is not apparent from the file whether the video's content has been collected, preserved and/or stored in a manner which guarantees accessibility for members of the judiciary or interested parties.

12. The board could also not find publicly available information about whether and how, in proceedings before the EPO, the content of an internet video used as prior-art evidence in examination should be preserved and made accessible to external parties or the boards of appeal.

12.1 The information about a European patent application or patent is recorded in the European Patent Register which, in accordance with Article 127 EPC, is kept by the EPO and open to inspection by the public. Following Rule 147(1) and (2) EPC, files relating to a European patent application or patent are constituted, maintained and preserved in electronic form, in accordance with the technical and administrative arrangements determined by the President of the EPO. Any files shall be preserved for at least five years from the end of the year in which the application is refused, deemed withdrawn, or the patent is revoked or lapses (Rule 147(4) EPC). In case appeal or opposition proceedings have taken place, the files will not be destroyed before 25 years after the date of filing (OJ EPO 1990, page 365).

12.2 In accordance with Rule 65 EPC, the European search report is to be transmitted to the applicant together with copies of any cited documents. The European Patent Register includes entries for new documents coming to light after the European search report was drawn up (Rule 143(2) EPC, OJ EPO, 2014, A86).

13. The Guidelines for Examination in the EPO (G-IV, 7.5) underline that, for the sake of a valid patent, it is often crucial to cite publications only obtainable from internet websites. With regard to the search report, the Guidelines for Examination (B-X, 11.6) indicate that video and/or audio media fragments available on the internet are converted into a non-patent literature citation, and that the bibliographic data contains the URL of the original location on the internet. At the time the decision under appeal was written, the Guidelines for Examination (November 2018, B-X, 11.6) further indicated that such fragments should be cited as a screenshot of the first page of the internet citation. In the present case, the non-patent literature citation is document D4 with a screenshot of the video. The examining division has thus followed the indications in the Guidelines.

However, a number of screenshots taken from a video, let alone a single screenshot, fail to preserve in its original format the necessary video content to ensure that the video evidence required for review and public inspection is available later. Consequently, the procedure in accordance with the Guidelines for Examination, B-X, 11.6 is insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC).

The board could not find any other passages of the Guidelines for Examination describing how to preserve the content of multimedia disclosure used as prior art in the proceedings before the EPO and to guarantee its accessibility for external parties or judicial bodies.