In two invalidation cases we have represented, petitioners used YouTube videos to demonstrate the closest prior art when challenging patentability. In analyzing such a case, the relevant results of the examination of invalidation requests published on the Patent Reexamination and Invalidation page of the China National Intellectual Property Administration (CNIPA) website and the judgments on China Judgments Online, this article will explore the admissibility of YouTube videos as evidence. the state of the art and the points requiring special attention when using them.
(1) In a previous patent invalidation case, the petitioner submitted a YouTube video as evidence, claiming the upload date of September 2, 2010. During the hearing, the petitioner further produced a formal statement of online information download published on March 8, 2018 by a Hong Kong law firm. Representing the patentee, the authors challenged the video and the stated notarization process on the following points: First, the petitioner cannot guarantee the security of the file because the hardware and software environment used to upload and store the video, respectively , was not properly protected against viruses or malware; second, the videos cannot be downloaded directly from YouTube as described by the petitioner, but must be downloaded with the help of third-party software; and finally, by looking at the ownership of the video file, we discovered that its last modified date was September 23, 2015, neither the claimed upload time nor the issue date of the statement. In fact, it was after the filing date of the patent in dispute.
Ultimately, the court did not admit the Youtube video as evidence of prior art when determining invalidation.
(2) By searching for the term “YouTube” in the invalidation decisions published on the patent re-examination and invalidation page of the CNIPA website, we found 12 eligible cases. In eight of the above cases, the YouTube videos were found to be true and open and admitted as evidence of prior art in the patentability assessment; while in the remaining four cases, it was determined that the videos’ opening (i.e. the date they became publicly available) cannot be determined.
(3) When cross-searching the terms “YouTube” and “Beijing IP Court” on China Judgments Online, we also found opposite judgments. In general, however, there are significantly more cases where YouTube videos have been accepted as evidence of prior art than not.
During our research, we noticed that the 2019 administrative judgment of the Beijing Intellectual Property Court (the “Beijing Intellectual Property Court”) in Cleveron’s patent invalidation litigation contrasted with the opinion of the CNIPA Patent Reexamination Board in Invalidation Request Decision No. 38153 issued on November 29, 2018, under which the Board determined that the YouTube videos submitted cannot be admitted as evidence of the state of the technical because YouTube, being a public platform for exchanging videos, is not reliable in terms of content or date of publication. However, the Beijing Intellectual Property Court, finding that YouTube is an international video-sharing website with an adequate online monitoring and surveillance mechanism, admitted the YouTube videos submitted by the petitioner on this basis.
Based on the findings above, it can be observed that even with the same type of evidence, results may still vary according to different eligibility standards. In general, however, YouTube videos have a good chance of being accepted.
Invalidation applicants can confidently submit YouTube videos as evidence, particularly if the patent being challenged involves an outward appearance design, for which video evidence is preferable in determining patentability.
As YouTube is inaccessible in mainland China, YouTube videos are considered both online and offshore evidence. When notarizing, applicants should take note of the following:
- notarization could be done in Hong Kong for cost efficiency;
- keep the equipment used to upload the video and the online environment clean and secure;
- avoid using private videos;
- avoid getting the video by entering the link directly, instead search for keywords on the YouTube homepage;
- download the video file in the appropriate way;
- record every step of the way.
For patent holders, if a YouTube video is submitted, they can also challenge the evidence from the above point of view.
With more YouTube videos submitted as evidence, the courts will gradually form a consensus on their admissibility standards. This represents a new avenue for seeking invalidation, but at the same time challenges for patent holders. By analyzing the likelihood of YouTube videos being successfully submitted as evidence and the issues to watch out for, we hope this article proves beneficial to both sides of patent invalidation.