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Case law 7 Feb 2022

Decision based on a no longer accessible YouTube video cannot be reviewed

In this case, an applicant appeals a decision of the Examining Division (ED) to refuse an application on the grounds of lack of inventive step over document D2. D2 only shows an unclear frame of a YouTube video, while the decision refers to several video frames of said video. Moreover, the YouTube video is no longer available at the URL indicated by the ED. Therefore, the Board considers that it is no longer possible to review the decision. Consequently, they decide to set the decision under appeal aside, remit the case to the ED for further prosecution and reimburse the appeal fee.
This is an exceptional case
The Board of Appeal -

The ED had decided that the subject-matter of claim 1 of the main request and of the first to third auxiliary requests lacked inventive step over document D2. The appellant requested “that the decision under appeal be set aside and, as its main request, that the case be remitted to the examining division for further prosecution ("main request") or, in the alternative, that a patent be granted on the basis of the claims of one of the first to seventh auxiliary requests”.

In support of its request for remittal, the appellant argued that the ED introduced documents D5 to D7 shortly before the date of the oral proceedings, thereby not allowing the appellant to respond to the introduction of these documents in the first-instance proceedings. The Board considered it debatable whether the request can be based on those grounds, because the appellant could have requested a postponement of the oral proceedings. However, the Board found that the request for remittal has to be allowed for other reasons explained below.

The decision's inventive-step reasoning relies primarily on document D2, which is a screenshot of a web browser visiting the YouTube website. The screenshot shows an unclear frame, which does not appear to depict anything of relevance. The decision refers to several video frame sequences of the video which are not part of the screenshot in D2 and instead indicate an URL of the video. However, at the time the Board reviewed the case, the video was not anymore available at said URL.

The decision further mentions documents D5, D6 and D7 to explain what is shown in the YouTube video. According to the ED, those documents from a single disclosure with D2. The Board disagreed with the ED and doubted that “this is an exceptional case in which a skilled person watching the video would necessarily have been guided to consult documents D5, D6 and D7 in order to understand certain aspects of the video's disclosure (see e.g. decisions T 233/90, Reasons 3.3; T 2230/12, Reasons 8.3), and the contested decision does not contain arguments in support of such an exceptional case anyway.”

Furthermore, the Board considered it not appropriate to examine itself whether the claims would be inventive over D5, D6 and D7. Therefore it was decided to remit the case to the ED.

In view of this, the Board considers that the decision’s reasoning does not allow the Board to assess its correctness. This is a substantial procedural violation and therefore reimbursement of the appeal fee is equitable.

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