Background and decision

Article 54 EPC is clear that the state of the art for an application contains everything publicly available prior to the priority date, including electronic videos. In T 3000/19, the Board of Appeal was asked to consider the refusal of an application on the basis of a prior art video. The video was cited by the examining division of first instance as a URL and a screenshot of the web page containing the video, as directed by the EPO Guidelines for Examination at the time. However, since the original first instance decision was issued the web page containing the video stopped functioning, meaning the Board of Appeal had no access to the cited video.

While the video was prior art for the application, the Board of Appeal decided that the content of the video could not be verified and therefore that the correctness of the original decision could not be reviewed. The Board of Appeal therefore remitted the case to the examining division for further prosecution. In addition, the Board of Appeal decided that the failure by the examining division to preserve the video such that it could be accessed by the Board of Appeal constitutes a substantial procedural violation, as the original decision was not sufficiently reasoned. This is despite the examining division following the EPO Guidelines for Examination at the time on how video evidence should be cited as prior art.

This case is, however, not the first time this issue has arisen. In T3071/19, the Board of Appeal decided that the correctness of the original decision at first instance could not be decided without access to the cited video, and reached the same conclusion as in the present case. Therefore, what is of more interest in the present case is the Board of Appeal’s additional comments regarding the citation of electronic evidence as prior art.

Analysis

The Board of Appeal provided extra discussion on the preservation of electronic evidence and noted the importance of continued accessibility to electronic evidence for the judiciary and interested third parties. The Board of Appeal also made reference to non-binding guidelines provided by the Council of Europe regarding how electronic evidence should be preserved. It is clear that this Board of Appeal intends that this case should act as guidance as to what steps the EPO must take to prevent a repeat of T3000/19. This is particularly evident as the present decision has been given the EPO’s second-highest distribution code: “B”, meaning the decision is distributed to all members of the Boards of Appeal.

The guidance suggests that special precautions should be taken to preserve electronic evidence. This includes collecting and securely storing the evidence in its original format and with standardised metadata to ensure the context of the evidence is preserved. At present, the EPO does not itself store video evidence, however the Board of Appeal have concluded that the EPO’s current system for citing electronic evidence is not adequate. Therefore, the EPO may decide to put procedures in place to preserve electronic evidence, however the cost of doing so is unclear and could be prohibitively high.

Importantly, the guidance from the Council of Europe referenced by the Board of Appeal also suggests that electronic evidence should only be used to the extent that it is strictly required for deciding a case. This raises the prospect of EPO examiners being discouraged from citing electronic evidence during prosecution of applications to avoid the EPO needing to implement provisions for collecting and storing large quantities of electronic evidence. This of course does not prevent third parties from citing video evidence during opposition proceedings.

Conclusion

This case highlights that while video evidence is legitimate prior art for a patent application, the fact that videos are harder to preserve may mean that examiners are hesitant to rely upon video evidence as prior art, unless the EPO changes its practices for citing electronic evidence. Just what this might mean for applications where the closest available prior art is an electronic video remains to be seen. What is clear, however, is that the current system for citing electronic evidence at the EPO is not fit for purpose and that changes must be made.