We hear this complaint about transparency most often from certain segments of the high-tech industry as part of their policy message that the \u201cpatent system is broken.\u201d One such prominent tech company is search giant Google. In formal comments submitted to the USPTO, for instance, Google asserts<\/a> that a fundamental problem undermining the quality of software patents is that a \u201csignificant amount of software-related prior art does not exist in common databases of issued patents and published academic literature.\u201d To remedy the situation, Google has encouraged the Patent Office to make use of \u201cthird party search tools,\u201d including its own powerful search engines, to locate this prior art.<\/p>\n Google is not shy about why<\/em> it wants more transparency with prior art. In a 2013 blog post<\/a>, Google Senior Patent Counsel Suzanne Michel condemned so-called \u201cpatent trolls\u201d and argued that the \u201cPTO should improve patent quality\u201d in order to \u201cend the growing troll problem.\u201d In comments<\/a> from 2014, three Google lawyers told the Patent Office that \u201cpoor quality software patents have driven a litigation boom that harms innovation\u201d and that making \u201csoftware-related prior art accessible\u201d will \u201cmake examination in the Office more robust to ensure that valid claims issue.\u201d In comments<\/a> submitted last May, Michel even proposed that the Patent Office use Google\u2019s own patent search engines for \u201cstreamlining searches for relevant prior art\u201d in order to enhance patent quality.<\/p>\n Given Google\u2019s stance on the importance of broadly available prior art to help weed out vague patents and neuter the \u201ctrolls\u201d that wield them, you\u2019d think that Google would share the same devotion to transparency when it comes to its own patent applications. But it does not. Google has not mentioned in its formal comments and in its public statements that even using its own search engine would fail to disclose a substantial majority of its own patent applications. Unlike the other top-ten patent recipients in the U.S., including many other tech companies, Google keeps most of its own patent applications secret. It does this while at the same time publicly decrying the lack of transparency in the patent system.<\/p>\n The reality is that Google has a patent transparency problem. Not only does Google not<\/em> allow many of its patent applications to be published early or even after eighteen months, which is the default rule, Google specifically requests that many of its patent applications never be published at all. So while Google says it wants patent applications from around the world to be searchable at the click of a mouse, this apparently does not include its own applications. The numbers here are startling and thus deserve to be made public\u2014in the name of true transparency\u2014for the first time.<\/p>\n Beginning with the American Inventors Protection Act of 1999 (AIPA<\/a>), the default rule<\/a> has been that a patent application is published eighteen months after its filing date. The eighteen-month disclosure of the patent application will occur unless an applicant files a formal request that the application not be published at all. An applicant also has the option to obtain early<\/em> publication in exchange for a fee. Before the AIPA, an application would only be made public if and when the patent was eventually granted. This allowed an applicant to keep her invention a trade secret in case the application was later abandoned or rejected.<\/p>\n The publication of patent applications provides two benefits to the innovation industries, especially given that the waiting time<\/a> between filing of an application and issuance of the patent or a final rejection by an examiner can take years. First, earlier publication of applications provides notice to third parties that a patent may cover a technology they are considering adopting in their own commercial activities. Second, publication of patent applications expands the field of publicly-available prior art, which can be used to invalidate either other patent applications or already-issued patents themselves. Both of these goals produce better-quality patents and an efficiently-functioning innovation economy.<\/p>\n Separate from the legal mandate to publish patent applications, Google has devoted its own resources to creating greater public access to patents and patent applications. From its Google Patent Search<\/a> in 2006 and its Prior Art Finder<\/a> in 2012 to its current Google Patents<\/a>, Google has parlayed its search expertise into making it simple to find prior art from around the world. Google Patents now includes<\/a> patent applications \u201cfrom the USPTO, EPO, JPO, SIPO, WIPO, DPMA, and CIPO,\u201d even translating them into English. It\u2019s this search capability that Google has been encouraging the Patent Office to utilize in the quest to make relevant prior art more accessible.<\/p>\n Given Google\u2019s commitment to patent transparency, one might expect that Google would at least be content to allow default publication of its own applications under the AIPA\u2019s eighteen-month default rule. Perhaps, one might think, Google would even opt for early publication. However, neither appears to be the case; Google instead is a frequent user of the nonpublication option.<\/p>\n After hearing anecdotal reports indicating that Google was frequently using its option under the AIPA to avoid publishing its patent applications, we decided to investigate further. We looked at the patents Google received in 2014 to see what proportion of its applications was subject to nonpublication requests. To provide context, we also looked at how Google compared to the other top-ten patent recipients in this regard. The results are startling.<\/p>\n Unfortunately, there\u2019s no simple way to tell if a nonpublication request was made when a patent application was filed using the USPTO\u2019s online databases\u2014nonpublication requests are not an available search field. The same appears to be true of subscription databases. The searches therefore have to be done manually, digging through the USPTO\u2019s Public PAIR<\/a> database to find the application (known in patent parlance as the \u201cfile wrapper\u201d) for each individual patent that includes the individual application documents. Those interested in doing this will find startling numbers of patent applications kept secret by Google, both in terms of absolute numbers but also as compared to the other top-ten recipients of U.S. patents.<\/p>\n By way of example as to what one needs to look for, take the last three patents<\/a> issued to Google in 2014: D720,389; 8,925,106; and 8,924,993.<\/p>\n For the first patent<\/a>, the application was filed on December 13, 2013, and according to the application data sheet, no request was made to either publish it early or not publish it at all:<\/p>\n Since no such request was made, the application would normally be published eighteen months later or upon issuance of the patent. Indeed, that is what happened in due course\u2014this patent issued just over one year after the application was filed, as it was concurrently published and issued in December of 2014.<\/p>\n For the second patent<\/a> in our small set of examples, the application was filed on April 20, 2012. In this case, Google requested nonpublication by including a letter requesting that the application not be published:<\/p>\n Google thus opted out of the default eighteen-month publication rule, and the application was not published until the patent issued in December of 2014, some twenty months later.<\/p>\nPublic Disclosure of Patent Applications<\/strong><\/h2>\n
Google\u2019s Secrecy vs. Other Top-Ten Patent Recipients<\/strong><\/h2>\n
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