Backing (up) your arguments

At some point over their career, every patent attorney will have inevitably dealt with a client who will ask if removing their own public disclosure from the internet will make their invention patentable. Where before the answer would’ve been ‘no’, is the answer now “maybe, if there is no record”?

Regularly saving your work is always good practise, whether working on a report, making a graphic, or in the case of the EPO Examining Division, citing non-patent literature as prior art.

The EPO Board of Appeal were asked to review the Examining Division’s refusal of a patent application 11741809.5 whose objections were primarily based on a YouTube video which was publicly disclosed before the patent application filing date but had subsequently been removed when the Board were presiding. The Examining Division had made no copy of the video, and thus there was no means for the Board to verify the Examining Division’s objections or the appellant’s arguments.

While examiners prefer to use earlier patent publications as prior art, it isn’t always possible, and other forms of media must be used instead. The question then becomes, how do you validly cite them in a written report? In the case of video citations, the best method is not always clear. Article 54 EPC explicitly states that videos are fully citeable and can form part of the state of the art. The EPO Guidelines for Examination (G-IV, 7.5) advise that for internet citations, only publications which are directly obtainable from a website should be included and that the search report should have bibliographic data, screenshots of the relevant fragments of the video, and provide the URL (GL B-X 11.6).

In the case of 11741809.5, the Examining Division stated that the claimed invention lacked an inventive step, citing a YouTube video amongst a number of other documents which were to be viewed in combination. The Examining Division largely complied with the guidance; however, it only provided a poor-quality screenshot of the first frame of the video.

The Division’s reasoning referenced several other frames and sequences for which there were no screenshots. Although the Examining Division described the content of the relevant fragments in detail, no screenshots were kept, and the Board deemed there not to be enough evidence for it to make its own assessment of the relevant evidence.

The Board further held that since the video had not been archived, a decision from the Board could not be properly reasoned in accordance with Rule 111(2) of the EPC and therefore constituted a procedural violation.

The Board remitted the case back to the Examining Division for further prosecution under Article 111(1) EPC.

Conclusion

The decision to refer the case back to the Examining Division has some potentially interesting implications for what qualifies as a disclosure. Article 52(2) states that everything made available to the public by means of written, oral, use, or any other way before the filing date of the invention forms part of the state of the art. UK Attorneys typically understand this to mean that anything that is (or had been) disclosed before the filing dates will impugn novelty and inventiveness, using the Wake Forest University Health Sciences & Ors v Smith & Nephew Plc & Anor [2009] EWCA Civ 848 as an example, in which a disclosure made in Russian, in an old book sitting in a Soviet Union library still counted as a disclosure, despite the courts' acknowledgement that it was highly unlikely that anyone had ever checked-out the book or read the disclosure.

The Examining Division also made a significant effort to comply with the guidelines by writing descriptions of the relevant fragments of the video. By referring the case back to the Examining Division, the Board could also undermine the strength of oral and evidential written disclosures as these will rarely be documented until after the application has been filed.

The Council of Europe has published guidelines for dealing with electronic evidence in civil and administrative proceedings, which was adopted by the Committee of Ministers of the Council of Europe on 30 January 2019; however, these are non-binding and not reflected in the current guidelines. In light of the current decision, the EPO will likely update their internal procedures to ensure video and audio evidence is correctly archived.

As this is an internal procedural issue within the EPO, it will have little to no impact on Patent Attorneys or their clients. However, the decision could benefit inventors who remove any existing internet disclosures of their invention before the search report.