Hey, Speech Heads. If you caught yesterday’s post, an omitted sidebar from my article, you likely saw a response from Walt Testchner. He felt that I had taken what he said out of context.

I wrote that he said that felt that technologists were the best gauges of knowing whether their art is infringing or something truly novel—after all, they are, at least ostensibly, masters of their craft. They should be in a position to know.

Walt, however, made a second point that we hadn’t included in the sidebar. He reproduced it his response, but I’m going to quote it more visibly up here in the interest of fairness.

He wrote:

I really believe that using lawyers to do the search for prior art is a huge part of the reason that we have so many patents issued that are bogus. If the inventors did the search themselves they would be less likely to submit a fraudulent patent application. As I recommended in the article that I sent you, the way to reduce the number of fraudulent patents that are issued is to make knowingly submitting a fraudulent patent application equivalent to lying under oath.

What Walt’s arguments seem to suggest (and I’m sure he’ll correct me if I’m reading this wrong) that the patent system should be driven by a community of inventors that make up their given art, and that to ensure it is, practitioners skilled in their art need to take more personal responsibility in pursuing their own patents.

When he talks about egregious examples of “fraudulent patents” or advocates for a more inventor-driven process, the sum total of his arguments suggest that bringing outside forces (read: lawyers) into the patent process has perverted it. The process has been taken away from a community of practitioners skilled in the art and turned into something else, perhaps a moneymill for lawyers.

In full interest of fairness to attorneys, I think many of them would argue that they are not outside forces; that a patent is a legal protection with legal jeopardy attached to it. They might say that a patent is the, at best, uncomfortable marriage of technology and law and they are inherently a part of the process, not an extraneous force. At least that’s what I read in Gregory A. Nelson’s comments. He suggests that if a patent is worth pursuing, it’s worth pursuing with professional guidance.

I certainly won’t weigh in on this personally. I am neither a technologist nor an attorney, but I think this a really interesting debate. It gets to the core of not only what a patent is, but what it ought to be and the real world constraints that impinge on the ideal.

When I wrote this sidebar, my hope was to engage readers in a debate about the fundamental core of patents. I think there is a very vital and interesting debate at the center of what Walt and Gregory are saying. In the original side bar posted yesterday, because of space constraints for print, much of what I wanted to get into was cut. The discussion suffered; I’m sure.

In retrospect, I should have overhauled it for the blog. This is the perfect venue for a longer more nuanced discussion. My apologies to both Walt and Gregory on that count. I am sincerely glad that Walt wrote back, though. I think this has become to perfect opportunity to open the floor for a wider discussion. I’d like to throw this back to Walt, Gregory, other technologists in speech, and the legal community. If you have anything you’d like to post, feel free to comment or write me directly. I’d like to make the blog a space to talk about this.

Speech Heads, you’ll remember from a couple weeks ago when I posted about Bilski v. Doll that I had mentioned a forthcoming patent feature cover article. Well, I am happy to report that the wait is practically over. The issue is out the door and will be stuffed in your mailboxes in a matter of days. That is, of course, unless you don’t have a subscription, which my brother Adam B. says is “colossally stupid” since they’re free, and which should be rectified by clicking here forthwith and making with the subscribing.

In any case, as I was working on the article, trying to jam as much as I could into the increasingly meager looking allotment of words I had, I ended up having to put a lot of interesting—but ancillary—stuff in sidebars that never got printed. For your benefit (and in order to hype the article) I’ll be presenting them here all this week. So let us begin with:

Who Needs A Lawyer Anyway?

If you consider jokes a reliable metric of the way people feel, it seems no one likes a lawyer.

Walt Tetschner, publisher of ASRNews and an independent consultant who has consulted on patent applications, not only doesn’t seem to like them, he doesn’t see much use for them in the patent space. Tetschner remains fiercely skeptical of the use value of using an attorney in the patent process.

“[A lawyer] typically does not clue about the technical area,” he writes in an email to Speech Technology. “Do you know what is involved in searching through the 5 million active patents that exist in the US PTO [Patent and Trade Mark Office]?  Expecting the lawyer to discover prior art is incredibly optimistic.”

To Testschner’s mind, a technologist should be able to file for herself. Her understanding of the technology and expertise in her field (that is her inherent knowledge of the industry and its prior art) should be more capable of competently draft a patent than a lawyer as she is more familiar with the prior art in her field. Tetschner points to the PTO’s own search engine as a capable and comprehensive way of looking prior arts.

Patent attorneys, on the other hand, will defend their practice in the following ways: they are more fully aware of the legal ramifications of patents (they handle the suits and can draft patents to more adequately protect the filer—after all, for a filer, a patent is really a document about legal protection first and technology second); by having attorneys draft patents for them, technologists free their time to work on technology (prosecuting a patent is time intensive); if a patent is truly worth pursuing, it’s worth pursuing professionally.

“I’ve always told clients that if the technology has no value, don’t spend any money protecting it,” says Gregory A. Nelson, an attorney with Novak Druce + Quig. “If it does have value then the cost of professional assistance very small compared to the value of the patent. It’s more often just a question of not needing to file for everything—maybe being more thoughtful about what a company files or does not file for.”

Whether one needs an attorney or not in the end calculus is a matter of goals, means, and preferences.

This morning, the Supreme Court granted Bilski v. Doll hearing, setting the stage for a show down over whether business methods are actually patentable.

DUM-DUM-DAH! (dramatic music)

For those of you out there in Speechlandia who haven’t been watching the stormy patent waters, this is big news. The Bilski appeal is a challenge to a ruling made back in October by the U.S. Court of Appeals for the Federal Circuit. The appeals court decided that a patent for a process for predicting and hedging risk in commodities markets (seems like these guys are making a muck of everything lately, don’t it?) wasn’t deserved because it wasn’t tied to a machine and did not result in “physical transformation.”

This is a reversal of a ruling the same court made back in ‘98, when it decided that anything outside of natural laws and abstract ideas was more or less patentable.

As you probably suspect, the October decision has far broader implications than just the financial services sector where the patent had come from.

A decision in this case from the highest court has the potential to strike out an entire class of patent that sprung up over the last 10 years.

According to Business Week, after the ‘98 decision there was a deluge of patent applications.  “More established companies raced to add such patents to their portfolios, if only as a defensive move against rivals that might beat them to the punch.”

In 2005, the periodical notes, IBM received more than 300 business process patents despite the fact that it was openly questioning their legal basis entirely.

A lot of I.T. folks have been shaking over this because the ruling seems to make patents much harder for the technology space where new processes that aren’t “physical transformations” aren’t as obviously patentable. These critics feel that the ruling will result in a reduction of patents in the space, and a slowing down of innovation.

“These are key areas. There have been recent decisions that followed Bilski and struck down some patents that we thought were patentable,” said Michael Jakes, a patent lawyer for Finnegan LLP who will argue for Bilski before the Supreme Court, to Reuters.

Others, like Stephen Albainy-Jenei, an attorney for Frost Brown Todd, suggested in March that Bilski was “much ado about nothing” in part because “clever attorneys can still get their ‘business methods patents’ past [the P.T.O.] by casting them in the form of machines that manipulate data.”

He goes on to say that even Amazon’s infamous “1-Click” patent, (an often invoked offender against all that is decent and right about patents—my words, not his) includes claims directed to machines, rather than limiting itself to just process claims.

It’s difficult to say what will result from the case, and it will probably be about a year before we would even see something handed down. By then the court will probably have a new justice—-Judge Sotomayor if the President gets his druthers.

On an interesting note about Sotomayor, according to The Blog of Legal Times, her former husband Kevin Noonan, a partner at McDonnell, Boehnen, Hulbert, and Berghoff, said Bilski is “spreading like a stain” to mar a broad range of patents. No clues as to whether that has any impact on Judge Sotomayor, herself.

Whatever develops though, my brother Adam B. and I will keep you posted.

Look for my feature on patents in the July/August issue of Speech Tech due out in a little more over a month.