How Do You Cite to a YouTube Video as Non-Patent Literature in an Information Disclosure Statement?
YouTube is a fantastic source of information. There is seemingly a video on any topic you can imagine. If a picture is worth a thousand words, then a video can be worth millions of words.
It is, therefore, becoming more common that a YouTube video may contain background information that a patent owner would like to cite to the patent office on an information disclosure statement as Non-Patent Literature. The MPEP considers "digital videos" as a "printed publication." The background information can be used to illustrate the state of the art at the time of the invention, and secondary considerations of non-obviousness. See MPEP 2128 ("An electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, and social media post), is considered to be a 'printed publication' within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. ")
Indeed, this is why I previously noted that you might need to submit a video on an information disclosure statement as non-patent literature. See What Different Types of Art Must be Cited to the USPTO?. So how do you take a video and turn it into something that can be submitted as an NPL document as part of an information disclosure statement? You need to convert it into a PDF document.
How do you convert a video into a PDF? The following process might be used:
Locate the video you want to submit as an NPL document. Copy the URL (e.g., https://www.youtube.com/watch?v=DjO1PjnTOFE).
Download a copy of the video for your records using an online tool that allows for the downloading of videos.
Create a word document:
On the first page, create a cover page containing a citation number that will be used in the IDS form (e.g., Cite No D013) to help the Examiner identify the document.
On the second Page, paste a screenshot including:
the YouTube video page showing the URL,
The "uploaded on" date,
The name of the user that posted the video,
The time scale, and
the video description
Below the screenshot of the video information, paste in the automated time-stamped transcript from YouTube which you can find by clicking the "… More" button and selecting "Open Transcript" from the sub-menu.
Select the text from the transcript window that opens, copy and paste it into the document.
Then, fix the formatting and typographical errors as you watch the video.
On your second pass through watching the video, paste in time-stamped screenshots from the video that illustrates the aspects of the video you find particularly relevant. For example, perhaps you consider the transparent nature of the IceTouch screen pertinent to an invention, and in particular to show the screen shows the reverse image on the opposite side of the transparent screen. You can insert screenshots from the video emphasizing the state of the art at the time:
During regular prosecution, you do not need to worry too much about establishing background information relating to accessibility and public dissemination.
To the extent that you are submitting a YouTube or other video in post-grant proceedings, you may also similarly present the art in this manner. However, it should be accompanied with a careful explanation of the details for public accessibility and dissemination:
"In the Acco case, in which claims were invalidated using the on-line ClickSave video, the Petitioner provided declaration testimony from a ClickSave director responsible for launching the ClickSave line of computer lock products."
"In light of cases like Intex and Acco, it appears that the PTAB is willing to accept videos as printed publications, at least under the right circumstances. Those circumstances include, of course, the establishment of a proper foundation of the video, including authentication of the content of the video and dates of dissemination and accessibility. For content, the PTAB, in cases like Acco, seems willing to rely on annotations of printed screen shots from the video, such as annotated still frames."
See O'Neill, "Videos as a Printed Publication in Inter Partes Review," IPWatchdog (Dec. 5, 2016).
In the next post, we will discuss defenses based on patentable subject matter.