Since its inception in 2005, YouTube has been raising eyebrows across the globe due to its simplicity and increasing popularity. As of today, YouTube is the second most visited website in the world after Google. There is something else as well which has been gaining popularity in leaps and bounds, especially in the US, Patent Litigations. With the rise in the number of infringement cases filed each year, there has also been a rise in how to get rid of useless litigations. The first thing that comes to mind in that context is finding a good prior-art.
Although there might be new forms of prior art emerging, it seems that as a medium, a video has been a potential prior art source for many decades. The fact that a given video is uploaded to, and becomes accessible via, a publicly accessible web server, and the ease and low cost at which the masses can now widely publish videos might increase the likelihood that a given applicant will become aware of a given video.
Inventors, attorneys, examiners, and researchers have had to face the dilemma of whether to include a YouTube video as a prior-art. Many have brainstormed over this question that still seems to be unanswered, more so in the US than anywhere else. European Patent system has a provision that allows prior disclosure by any means to be used as prior art. For instance in the case T952/92, it clearly states “novelty of a claimed invention is destroyed by the prior disclosure (by any means) of an embodiment which falls within the claim. The possibility of a complete analysis of a prior sold product is not necessary.”
YouTube videos published as early as 2006 have been cited as prior arts in the US. Most of them have been used by examiners to reject patent application claims. However, there have been several patent litigations where YouTube videos have been used as prior arts; most notable is Apple v. Samsung. These videos have helped in making better decisions and led to favourable results. However, in Diomed, Inc. v. Angiodynamics (2006), a video was not considered to be a printed publication, suggesting that a video alone is generally not enough, even if it discloses all the important details.
Putting an end to the long discussion of whether YouTube videos can be used as prior arts, USPTO published a document related to America Invent Act (AIA) implementation where it categorized a YouTube video to “qualify as a Printed Publication under AIA and pre-AIA laws.” (Page 15 of ‘First Inventor to File (FITF) Comprehensive Training: Prior Art Under the AIA‘)
AIA adds a new provision to 35 USC 102(a)(1) in the form of “Otherwise available to the public” which had no counterpart in pre-AIA law. USPTO explains further that “an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show and a YouTube video, Web site, or other on-line material (this type of disclosure may also qualify as a printed publication under AIA and pre-AIA law)”
Hence, answering the long brainstormed question of whether a You-Tube video can be considered as prior art. But the new question that arises is in what form should a YouTube video be submitted to be considered by the examiner or jury, provide necessary evidence and make the most sense.
We have collated a list of steps to follow when submitting a YouTube video as a prior-art:
- Take screenshots of each frame of the video playing inside the browser.
- Make sure the URL to the video and the date of publication (or upload) of the video is visible in each screenshot.
- Collate the screenshots in a single document in an increasing order of time.
- Mention the time stamp below each screenshot so that the examiner has a track of when something is happening. It will also help in citing to a particular time where the most important piece of evidence is.
- Also, clearly mention the URL to the video in the document.
- Provide Captions of the entire video. Use Google’s Automatic Captioning service in YouTube.
- If in case the video is taken down due to some reason, search for the same on Internet Archive Wayback Machine for YouTube and provide a URL of the same.
- A link to the video should be submitted on the IDS form or a video tape/DVD can be submitted by express mail or in person.
USPTO has made it very clear that YouTube videos can be used as Prior arts. We hope this article is helpful to applicants and inventors in submitting YouTube (or any other kind of) videos as prior arts.