Dramatic Expansion Of Patentability In The US: Google Acquired A Patent On Doodles

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^[1].  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”^[2]. 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^[3]:

1. Create a special logo;
2. Associate a link or search results with the logo;
3. Upload the logo to the web page; and
4. 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^[4]. Most concerns center on issues of novelty and non-obviousness as required by § 102 and § 103 of the Patent Act (the Act)^[5]. 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^[6]. 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^[7] 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^[8], suggests that the distinction between unpatentable abstract ideas and their patentable applications hinges on the existence of “a real world focus”^[9].  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^[10]. 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^[11]. 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^[12]. In addition, § 112 of the Act mandates that an invention must satisfy the requirement of enablement^[13]. Case law suggests if an invention is inoperable and lacks utility, it will also fail the enablement requirement^[14]. 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^[15], 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.