Xiaoyang Yang is a JD candidate at Osgoode Hall Law School and is enrolled in Professor Mgbeoji’s Patents class in Fall 2011. As part of the course requirements, students are asked to write a blog on a topic of their choice.
In March 2011, Google was granted its long-sought patent for “Google Doodles” by the United States Patent and Trademark Office. Google Doodles are logos created by Google to celebrate special events or pay homage to historical figures. There is no doubt about Doodles’ success as an Internet existence; indeed, in the past they have become Internet sensations, with their creative logos found all over the world. Nevertheless, a patent protecting Doodles seems to be far-fetched, leading one to question the legitimacy of the ever-expanding definition of patentability in the US patent system.
In its patent, Google claims to have invented “a system or method for enticing customers to access a web page”. It is unclear where any innovative creation has taken place. There is no advanced technology implemented and the system/method can be reduced to the following steps:
- Create a special logo;
- Associate a link or search results with the logo;
- Upload the logo to the web page; and
- If a user clicks on the logo, the linked document(s) will be provided.
Judging from the above steps, this is not a system/method that is not being used worldwide – it is simply a daily advertisement.
The grant of the patent has elicited numerous negative critiques. Most concerns center on issues of novelty and non-obviousness as required by § 102 and § 103 of the Patent Act (the Act). It has been noted that the advertising practice of using animated images or customized logos on web pages to attract customers is common on the Internet – even a daily update does not change the system at the core. In this regard, Google’s patent may not have sufficient novelty or even fulfill the requirement of non-obviousness.
Further, the system/method is merely a form of advertising – an abstract idea in itself. This is unpatentable in light of the recent decision in Bilski v Kappos by the Supreme Court of the United States (USSC). In Bilski, an abstract investment strategy of hedging losses against the price changes in the energy market was held to be unpatentable as an abstract idea. The Bilski decision, conceived along with the Benson-Flook-Diehr Trilogy, suggests that the distinction between unpatentable abstract ideas and their patentable applications hinges on the existence of “a real world focus”. If the result of an abstract idea is applied to obtain a practical use or solve a real-world problem, such an application may be patentable. It is worth noting that the practical use must be integral to the invention. Being able to use the results of a claimed system, which is essentially an abstract idea or theorem, in a practical manner does not make the system itself patentable. Applying Bilski to Google’s patent, the fact that users may retrieve data after they are enticed to the web page does not create patentability. Furthermore, as held by the USSC in Bilski, allowing Google to patent its abstract idea of interactive advertising would preempt the use of this approach in all fields, and would effectively grant a monopoly over the concept.
A third issue that arises from Google’s patent is related to utility and enablement. An invention must fulfill the requirement of utility as required by § 101 of the Act. In addition, § 112 of the Act mandates that an invention must satisfy the requirement of enablement. Case law suggests if an invention is inoperable and lacks utility, it will also fail the enablement requirement. Since Google claims Doodles work as a system/method to entice customers, it must be proven that customers are indeed enticed by Doodles. The problem here is that Doodles cannot work without fail; not every customer will be attracted by a given Doodle. As such, it remains a question as to how Google can prove Doodles function as it claims in the patent. One may suggest an overall success rate of Doodles helps. Unfortunately, I would argue that it does not. First, prior to Doodle’s existence, Google’s search engine was already an Internet heavyweight. Absent any evidence that Doodles have significantly improved Google’s success, there is no proof of utility to rely on. Second, a success rate may not be reproduced consistently in the future and is thus unreliable. Doodles’ alleged success hinges on things that are not constant and stable – the creativity and initiatives of their artists. Therefore, there seems to be no way for Google to prove utility. As to enablement, the patent cannot teach other companies to be equally successful because the creativity and initiatives of Google’s artists cannot be taught by the patent. Insofar as other companies cannot reproduce Doodles’ previous success, Google’s patent arguably fails the enablement requirement.
Although it is believed that “anything under the sun that is made by man” should be patentable in the US patent system, Google’s patent on Doodles still constitutes a dramatic expansion of patentability. It remains to be seen whether the patent will stand up to judicial examination until it is challenged at courts. If the patent does survive, it is clear that the US patent system does not patent solely “anything under the sun that is made by man”; they simply patent anything under the sun.
 “Systems and methods for enticing users to access a web site,” US Patent No 7912915, (April 30, 2001).
 Supra note 1, claim 1.
 See “USPTO Gives Google Patent For Doodles”, online: Slashdot < http://idle.slashdot.org/story/11/03/22/1336220/uspto-gives-google-patent-for-doodles>.
 35 USC § 102 and § 103 (2000).
 See “If Google Doodles A Patent In The Woods, Does It Get A Laugh?”, online: Gametime IP < http://gametimeip.com/2011/03/23/if-a-google-doodles-a-patent-in-the-woods-does-it-get-a-laugh/>.
 Bilski v Kappos, 130 S Ct 3218, 561 US __, 177 L Ed 2d 792 (2010) (Bilski).
Benson: Gottschalk v Benson, 409 US 63 (1972); Flook: Parker v Flook, 437 US 584 (1978); Diehr: Diamond v Diehr, 450 US 175 (1981).
 Dave Syrowik, “Bridging The Gap” 90 Mich BJ 27 2011 at 30.
 In Benson, Flook, and Biski, in spite of the availability of the practical use external to the inventions at issue, the USSC found them to be attempts to patent abstract ideas.
 35 USC § 101 (2000).
 35 USC § 112 (2000).
 The logic is that if an invention were useless, it would be impossible for the patent to teach a person skilled in the art how to use it. See In re Fouche, 439 F2d at 1237, 1243 (CCPA 1971); In re Brana, 51 F3d at 1564.
 S Rep No 1979, 82d Cong, 2d Sess, 5 (1952); HR Rep No 1979, 82d Cong, 2d Sess, 6 (1952).
Without wishing to defend this Google patent against other objections, I would query the attack on utility. The suggestion seems to be that Google must prove that their invention always attracts more traffic under all conditions. That’s far too high a standard. It seems intrinsically plausible that it will have some effect on attracting traffic – that, to my mind, should be at least enough to shift the burden of proof.
[…] has been getting its own share of ridiculous patents, but it has no history of using patents offensively. This ought to invalidate concerns about Google […]
Ah the USPTO, I wonder how long it will be before a court actually takes judicial notice of their terrible prior art searches.
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