The INPI has ruled that a YouTube video can qualify as prior art opposable to a patent, under certain conditions. It also examined the admissibility of late-stage requests during opposition proceedings.
The Opposition Division’s Decision OPP22-0015
Context
A third party filed an opposition seeking the full revocation of patent FR 3 100 140 for lack of novelty or inventive step (Articles L611-11, L611-14 of the French Intellectual Property Code – CPI).
The patent concerns a device and method for automatically sorting agricultural products, such as bulbs, including potatoes and carrots. The products are transported on a conveyor belt and photographed or filmed to analyze their visual attributes (size, shape, color, etc.), which determines their quality and suitability for specific sorting categories.
Recordings and Screenshots
The opponent cited two YouTube videos showing sorting machines that were uploaded before the contested patent’s filing date. They also presented a brochure for the machine in the first video, screenshots indicating the dates of the brochure and video, journal articles, and a patent application.
Patent owner’s Requests and Arguments
Main Request: The patent owner requested the rejection of the opposition.
The owner argued that the opponent failed to prove the authenticity of the submitted videos compared to their original versions as initially uploaded.
They also contended that public accessibility was not established. Some YouTube videos may be uploaded without indexing or referencing, making them inaccessible to the public without a direct URL.
In case of rejection of the main request, the patent owner sought to maintain the patent in a modified form, according to one of the auxiliary requests 1’’–4’’.
YouTube Videos in the State of the Art
The use of YouTube videos (or other online content) as prior art is becoming increasingly significant as digital content proliferates.
Evidence of Disclosure Required
The INPI accepted evidence such as YouTube timestamps and screenshots to establish the upload date and public accessibility of the videos (Reasons II.2.1.1 [35–38]).
The INPI emphasized that “replacing a video is not possible, as a new URL is assigned to any video uploaded on YouTube.”
Moreover, relying solely on view counts or “likes” does not demonstrate a lack of indexing for a YouTube video. Does it mean that even a video with no views can be considered publicly accessible, akin to a book sitting on a library shelf that is never borrowed?
Conversely, a screenshot showing the creation date of a brochure was insufficient to establish its publication date, as creation does not prove dissemination.
Recording Invalidates Novelty
To be relevant for assessing novelty or inventive step, the video must clearly disclose the essential technical elements of the invention.
Document D1 (a YouTube video recording) showed an Oculus machine in operation, accompanied by English audio commentary. The video depicted potatoes or carrots being transported on a conveyor belt, which rotates them for a complete visual analysis and sorting into different bins. This process corresponds to the patented claims.
The opposition division concluded that Document D1 disclosed all technical features of claim 1. The patent owner’s main request was therefore rejected.
Auxiliary Requests Submitted 13 Days Before the Hearing
Auxiliary requests 1’’ to 4’’ were considered late, as they were submitted outside the written phase deadlines, just 13 days before the hearing, replacing earlier requests 1’–6’.
Requests 1’’ and 4’’ included only visible modifications.
Admissibility of Auxiliary Requests
The opponent indicated they had sufficient time to review the auxiliary requests and did not oppose their admission.
The INPI found the principle of adversarial proceedings respected, especially since the amendments in request 1’’ had already been presented in the earlier written phase via requests 1’–6’.
Auxiliary requests 1’’ to 4’’ were admitted on the condition that the missing clean versions were submitted by the end of the oral phase (which was done during a session break).
Examination of Auxiliary Requests
The INPI reviewed the conformity of each request (L. 613-23-3 I 1°, 2°, and 3° CPI):
Requests 1’’ and 3’’: The modifications extended the subject matter of the patent beyond the content of the original application (L. 613-23-3 I. 2° CPI). For instance, claim 1 incorporated features from claim 7 without the preferred embodiment and partially from claim 8 while excluding one of its alternatives.
Request 2’’: Accepted. The patent was maintained in a modified form according to this request.
No appeal was filed.
Conclusion
A crucial aspect is the reliability of video evidence and its preservation over time. It is essential to document the availability and exact content of a video at a specific date, given the risk of removal from YouTube.
Decisions from the EPO Boards of Appeal (e.g., T 3071/19, T 3000/19) illustrate this point: in cases where videos were no longer accessible at the time of appeal, the Boards could not verify the validity of earlier decisions, leading to remands to the examination division.
The INPI recognizes YouTube videos as public disclosures that can serve as prior art, provided they meet the same standards as traditional written or oral publications.
It must be demonstrated that the video was publicly accessible before the effective date of the contested patent. Evidence such as YouTube timestamps and screenshots is admissible to establish the upload date and public accessibility. Low view counts or “likes” do not suffice to prove a lack of indexing.
Additionally, the INPI appears more flexible regarding the admissibility of “late” requests compared to other jurisdictions.