Over the last two months, we have been monitoring YogaGlo’s quest for a patent that would prevent competitors from recording online yoga trainings in a particular classroom setting without paying YogaGlo licensing fees. Recent developments in the patent application process have a distinct bad news, good news feel. The bad news: The U.S. Patent and Trademark Office (USPTO) approved the patent. The good news: Additional circumstances make that approval much less meaningful and probably render the patent unenforceable.
Two Patent Applications Initially Rejected
YogaGlo has submitted two almost-identical patent applications for a system and method of recording online yoga classes in a live classroom setting. The USPTO issued “office actions” this summer in which all the claims in both applications were rejected as being unpatentable. They based their rejection on the existence of "prior art," i.e., the legal term for information available before a patent application is filed, which can be used to invalidate a claim. USPTO's examiner said that another individual had already applied for a patent making the same claims that were found in YogaGlo's application.
(For additional background on this case, including the reasons that Yoga Alliance® opposes the issuance of this patent, please see our previous statements in the “Related articles” section at the bottom of this page.)
On Oct. 7, YogaGlo amended one of its patent applications. Their response to the USPTO’s action acknowledged that the "prior art" the examiner found invalidated YogaGlo's initial claims, but the amendment slightly revised the claims by explicitly noting that the camera used to record online classes must "provide a participatory view from a height of about three feet."
"By 'participatory view' we mean a view observed by a participant in the rear of the class," YogaGlo explained in its response.
Amended Patent Application Approved
On Oct. 29, the examiner determined that he could not find any prior art that barred YogaGlo's amended claim, so he issued a Notice of Allowance and approved the patent. YogaGlo paid the issue fee on Nov. 13.
So far it doesn't sound very promising for those who oppose YogaGlo's attempt to patent its obvious "invention."
But not so fast.
“Prior Art” Makes Patent Unenforceable
Under U.S. patent laws, applicants must apply for a patent within one year after they initially use their invention in the normal course of business. We have learned that video material on YogaGlo's own website predates its original filing on Aug. 27, 2010 by more than one year, and duplicates the system and method of recording a yoga class that YogaGlo is trying to patent. That video material clearly constitutes prior art that invalidates the claims in YogaGlo's patent and renders it unenforceable.
On Oct. 19, YogaGlo's lawyers received a letter from another online yoga vendor informing them about the video material that invalidates YogaGlo’s claims. To date, however, neither YogaGlo nor its lawyers have responded to that letter, and as far as we know YogaGlo has not reported this information to the USPTO.
We have received a number of emails from people claiming that other yoga schools and teachers have recorded videos of yoga classes using the same system and method that YogaGlo claims to have “invented,” and that they did so much earlier than YogaGlo. We have not had an opportunity to check those claims yet. But the fact that YogaGlo posted identical video material on its own site that predates the filing of its patent application by more than a year is significant because they are presumably aware of the existence of the material published on their own website.
During a patent application process, applicants who are or become aware of the existence of prior art that would invalidate their claim have a duty to report it to USPTO examiners. Applicants who fail to do so can face serious sanctions if and when they try to enforce a patent when this duty has been breached.
The USPTO has indicated that the YogaGlo patent will issue on Dec. 10. (The patent number, which has already been assigned, is U.S. Patent No. 8,605,152.) But as I noted above, the issuance of a patent doesn't guarantee that its owner will be able to enforce it, and it may well be that YogaGlo will request consideration of the prior art that has been brought to its attention, which would require the company to withdraw its patent application. So we will see.
Next Steps for Yoga Alliance
For reasons that we have described in previous posts, Yoga Alliance is committed to representing the yoga community's interests in this matter by resisting YogaGlo 's intention to restrict its competitors' ability to distribute video images of live yoga classes. There are several different approaches we can take, and we are considering all of our options. In the meantime, if you receive a cease-and-desist letter from YogaGlo attempting to enforce its patent, please let us know.
I want to thank the 14,000+ individuals in the yoga community who signed our online petition asking YogaGlo to withdraw its patent applications. YogaGlo has declined our collective request, so Yoga Alliance will now be required to devote additional resources to defeat this patent.
Related articles
"Yoga Alliance's Statement on YogaGlo Patent Forfeiture" - October 31, 2014
YogaGlo's most recent update states they “are not seeking another patent.” This is great news for the yoga community and for yoga practitioners everywhere because it means that individuals and organizations are now free to use any system and method of recording a live yoga class...
"An Update on YogaGlo's Patent Application" - October 11, 2013
We now have over 13,000 signatures on our online petition urging YogaGlo to withdraw the patent application it filed claiming ownership over a particular “method and apparatus” of recording yoga classes...
"Yoga Alliance Statement on the YogaGlo Patent Situation" - September 25, 2013
Earlier this week, Yoga International announced that it had received a cease-and-desist letter demanding that it discontinue the practice of providing online yoga instruction utilizing a visual recording of a standard yoga classroom set-up...