Key points
- In this appeal against the refusal of a patent application, the refusal decision was based on D2 as prior art. D2 is D2:"Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", YouTube, 9 July 2008, XP054978034, retrieved from the Internet: URL: https://www.youtube.com/watch?v=JskACcyZbMs
- However, that youtube video is no longer available as of the date of the Board decision (26.10.2021). The board indicates that it seems that the video became unavailable in the course of the appeal proceedings.
- “In the present case, the web page corresponding to the URL indicated in the citation of document D2 is indeed no longer functioning (showing "Video unavailable"). The board therefore cannot review the correctness of the decision's reasoning in so far as it relies on what is shown in the YouTube video. Nor can it assess the appellant's argument that the video is not an enabling disclosure.”
- The Board decides that therefore the decision is not properly reasoned in the sense of Rule 111(2) EPC.
- “The examining division could have prevented it [the problem of D2 being no longer available], for example by using appropriate screenshots as evidence of what was shown in the video or by otherwise ensuring that a person inspecting the file could reliably access the cited evidence. Indeed, the approach taken by the examining division in the present case also appears to be problematic in view of the rights of third parties and the public to inspect the file under Article 128 EPC.”
- The case is remitted with reimbursement of the appeal fee: “it cannot be entirely ruled out that the examining division will refuse the application for a second time for similar reasons (but on the basis of less-ephemeral evidence), compelling the appellant to file a further appeal based on essentially identical grounds. The board therefore considers reimbursement of the appeal fee to be equitable.”
- The Board in the headnote: “A decision should [in view of Rule 111(2) EPC] not rely on evidence accessible only at a web page which is not guaranteed to remain accessible and unchanged. Rather, it should be ensured that a person inspecting the file can reliably access the cited evidence.”
- The present case is a clear instruction for the first instance departments to set up a system to store video's relied on as prior art in the file of the application (and not only traditional prior art documents).
- Note that the headnote puts emphasis on third parties inspecting the file, but I think that first of all the issue that the Board has no copy of D2 in the file, irrespective of whether that is in the public file or in the internal file. Whether or not D2, if stored in the file, would be excluded from file inspection for third parties, is a distinct and separate issue from the one at issue in the case at hand.
T 3071/19 -
https://www.epo.org/law-practice/case-law-appeals/recent/t193071eu1.html
Reasons for the Decision
1. The application relates to searching data on mobile wireless communications devices.
Appellant's reasons for requesting remittal
2. In support of its request for remittal of the case to the examining division for further prosecution, the appellant submitted that the examining division had introduced document D4 only at the stage of the summons to oral proceedings and documents D5 to D7 less than two weeks before the date of the oral proceedings. The appellant had not had any chance to respond to the introduction of these documents in the first-instance proceedings.
3. The board notes that the appellant reacted to the late introduction of documents D4 to D7 not by requesting postponement of the oral proceedings but by informing the examining division that it would not attend them and requesting that they be held in its absence. It therefore seems debatable that the request for remittal can be allowed for the reasons indicated by the appellant. However, this point need not be decided because the request for remittal has to be allowed for other reasons, as explained below.
source http://justpatentlaw.blogspot.com/2021/11/t-307119-youtube-video-used-by-ed-no.html
