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Use of Video Deposits to Supplement Enablement Requirement
January 10, 2018


By Abhik A. Huq and Brandon R. Theiss

Videos are worth more than a picture, which in turn is only equal to a thousand words, in describing an invention and meeting the enablement requirement.

The enablement requirement for a patent application is captured in 35 U.S.C. § 112(a), which states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out his invention.

The goal of the enablement requirement for a patent application is to ensure that the invention is communicated to the interested public in a meaningful way.  This goal is achieved by requiring that the specification describe the invention in such terms that would enable one skilled in the art to make and use the claimed invention.

The question of how much is enough to satisfy the enablement requirement for a patent application has vexed patent office personnel, inventors, and patent attorneys and agents for as long as the requirement has existed.  There seems to be no delineation as to when a specification includes sufficient disclosure of an invention for one of ordinary skill in the art to make and use the claimed invention without undue experimentation.

Failure to satisfy the enablement requirement for a patent application can prevent allowance of a patent application or revocation of a patent.  This seems a steep price to pay for failing to meet the enablement requirement for a patent application.

However, as anyone that has tried to follow assembly instructions for furniture has experienced, it is extremely difficult to teach someone how to make and use a bookshelf based on words alone.  Therefore, the patent system has long recognized that words are not the only way to fulfill the enablement requirement for a patent application. For example, “[i]n those instances where a visual representation can flesh out words, drawings may be used in the same manner and with the same limitations as the specification” to fulfill the enablement requirement. (Autogiro Co. of Am. v. United States, 181 Ct. Cl. 55, 64, 384 F.2d 391, 398 (1967)).

Similarly, for inventions involving biological materials, the United States Patent and Trademark Office (“USPTO”) has stated in the Manual of Patent Examining Procedure (“MPEP”) § 2402, that where “the invention involves a biological material and words alone cannot sufficiently describe how to make and use the invention in a reproducible manner, access to the biological material may be necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. § 112.”  This access to the biological material is implemented by making a deposit of the biological material in accordance with the deposit rules set forth in 37 § CFR 1.801.

Likewise, for inventions involving nucleotide and/or amino acids, compliance with  35 U.S.C. § 112 is established using techniques beyond words. Specifically, enablement for these applications requires an additional “disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823.” (MPEP § 2421.1). The enabling disclosure of the nucleotide sequence may “be submitted on a compact disc in compliance with § 1.52(e).” (37 CFR 1.823).

Nucleotide sequences are not the only types of documents that are allowed to be submitted on compact disc. A printout of “machine or machine-independent (object or source) language which will cause a computer to perform a desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events” may also be electronically submitted as a “Computer Program Listing.” (37 CFR 1.96).  In addition, large tables of more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length are also required to be submitted on compact disc.  (see 37 CFR 1.52(e)). In order for these electronic documents to be considered part of the enabling disclosure, all that is required is a “[r]eference to a ‘Sequence Listing,’ a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc”  (37 CFR 1.77).

Accordingly, enablement for a patent application under 35 U.S.C. §112 can be accomplished by digital documents submitted in conjunction with the written application.

Enablement is not limited to 35 U.S.C. §112, and is instead integral to the requirements to establish a prior art reference needed for a prima facie case of anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103.

Specifically, a “prior art reference must be enabling so that the claimed subject matter may be made or used by one skilled in the art.” (In re Gleave, 560 F.3d 1331, 1335 (Fed. Cir. 2009).  Therefore, “Prior art is not enabling … if it does not enable a person of ordinary skill in the art to carry out the invention.” (Impax Labs., Inc. v. Aventis Pharm., Inc., 468 F.3d 1366, 1381 (Fed. Cir. 2006)). As a result, the question of what constitutes prior art also hinges on enablement.

Similar to enablement under 35 U.S.C. § 112, enablement of a prior art reference is not limited to printed words. For example, the MPEP states “pictures may constitute an “enabling disclosure.” (MPEP § 2121.04 (I)). To determine if a reference constitutes enabled prior art, the reference is evaluated by “apply[ing] the teachings … on the basis of what they reasonably disclose and suggest to one skilled in the art.” (In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979)).

However, prior to the American Invents Act (“AIA”), enabled prior art was limited to printed publications and excluded videos. (see for example  Diomed, Inc. v. AngioDynamics, Inc., 450 F. Supp. 2d 130, 142 (D. Mass. 2006) (“video is not a ‘printed publication’” and Milwaukee Elec. Tool Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 U.S. Dist. LEXIS 155132, at *85 (E.D. Wis. Sep. 22, 2017))  (“videos do not have a printed component and therefore do not qualify…”).  After the passage of the AIA, videos “may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.” (MPEP § 2128.02 (IV)). Specifically, in the USPTO’s review of 35 U.S.C. § 102(a)(1): “Otherwise Available to the Public” catch-all provision, the USPTO states that “a YouTube video, Web site, or other on-line material” can qualify as prior art under this provision.” (USPTO’s First Inventor to File (“FITF”) Comprehensive Training package and in particular, the Prior Art Under the AIA presentation (see USPTO’s First Inventor to Filf (FITF) Comprehensive Training).

By stating that videos may be used as prior art under the 35 U.S.C. §§ 102 and 103 patentability requirements, the USPTO seems to imply that videos by themselves may also meet the enablement requirement. Consequently, depositing videos as supplemental evidence of enablement should be permissible if videos can be used as prior art.

Therefore, it is proposed that the enablement requirement under 35 U.S.C. § 112 be similarly amended to allow for videos.  Videos would be particularly helpful, for example, with regard to inventions in the video or graphical processing arts, where highly complicated techniques are used to accelerate the processing of graphics and images in, for example, video games, autonomous vehicle applications, and virtual and augmented reality applications.  In these arts, examples of operating video and video tutorials detailing operational functionality of the application could be submitted to supplement the patent application, if necessary.

To implement the utilization of videos, it is proposed that the currently applied rules for biological material, nucleotide and/or amino acids, large table and program listings be applied to videos. There is no technological reason why the videos cannot be submitted using compact disks currently utilized for nucleotide and/or amino acids, large tables and program listings.

Alternatively, 37 CFR 1.57(e), which prohibits “hyperlinks and browser executable code,” could be amended. Allowing hyperlinks to the videos, would allow the video itself to be incorporated by reference under 37 CFR 1.57(b). However, this would require further amendment to 37 C.F.R. 1.57(b) because enabling disclosures can currently only be incorporated by reference only when the “incorporation by reference [is] to a U.S. patent or U.S. patent application publication.” These changes to the patent rules do not outweigh the benefits of allowing videos to fulfill the 35 U.S.C. § 112 enablement requirement.

Ultimately, the point of a patent is to proffer the invention to the public in exchange for a limited monopoly. Patent applications use flowcharts, tables, drawings, formulas and many other written means to teach the claimed invention. If a picture is worth a thousand words then a video may prove invaluable in conveying the claimed invention.