Wayne Sobon, associate general counsel and director of IP at global consulting giant Accenture, wasn't satisfied being one of the 38 amici who filed briefs for the U.S. Court of Appeals for the Federal Circuit's hearing of the Bilski case in May-far from it. First he brainstormed with public relations advisers at Burson-Marsteller, a leading global communications firm. Then, with help from the flacks, two weeks before the en banc hearing-which has been interpreted as a signal that business method patents are in danger of being curtailed-Sobon launched a new Web site and an organization to rally defenders of such patents, neweconomypatents.org. To cap off the blitz, on the day before the Federal Circuit hearing in May, Sobon staged a Washington, D.C., press conference trumpeting the economic benefits of business method patents.
Hardly standard operating procedure for most IP lawyers. But, says Sobon, "this is a situation that just begged for an integrated communications program. It's an issue that has serious implications for a broad array of businesses and for the American public at large, but those implications seemed lost in the public debate."
Serving as a director of the American Intellectual Property Lawyers Association (AIPLA) has educated Sobon on the benefits of public activism. He points to the AIPLA's amicus brief in the recent case brought by Tafas and GlaxoSmithKline, arguing against the Patent and Trademark Office's proposed patent rules. "This sort of focused advocacy by interested stakeholders has a real and important effect in shaping debates," says Sobon.
For those who haven't been keeping track, Bilski is an appeal from a PTO rejection of a patent application for a process for hedge fund risk management. The PTO rejected the application, saying that the process was not machine-implemented, nor did it transform any article to a different state or thing, so consequently there was no patentable subject matter. In hearing the case on its own accord, the Federal Circuit explicitly signaled its intent to at least revisit the criteria for awarding business method patents it laid down ten years ago in the State Street decision.
These are fighting words for Accenture, which spent more than $300 million in 2007 on research and development. The focus of that R&D is not just software and computer network applications, Sobon says, but applying management and industrial engineering principles to enterprises. For example, Sobon cites Accenture's innovations in the management of global workforces.
Since Sobon left the partnership at Gray Cary Ware and Freidenrich (since merged with DLA Piper) to join Accenture (then Andersen Consulting) as chief IP counsel in 2000, the consulting company has bolstered its patent portfolio. Accenture today has 300 U.S. patents and 600 applications pending; worldwide the company has about 450 issued patents and 1,500 applications pending. Accenture typically licenses its patents only to its clients, rather than third parties. During Sobon's tenure, Accenture has sued for patent infringement only once.
America's key competitive advantage globally now lies in services, information, and ideas, says Sobon. The patent system has been technology-neutral, and should stay that way, he says. "In the new economy, it's hard to separate business processes, software, and networks," he says.
As examples, he points to other amicus curiae, such as American Express, which has a patent for its security code methods. "Is that a business process? Or a software patent?"
In his brief Sobon stakes out the position that Congress has implicitly blessed business method patents. The year after State Street issued, Congress passed the First Inventor Defense Act of 1999, which gives a break to inventors who failed to file a patent application due to a mistaken belief that business methods were not patentable. Asks Sobon: "How can there be a prior user right to something that didn't exist?"
The Accenture media blitz, Sobon says, is to respond "to a drumbeat" of media coverage that portrays business method patents as silly and a hindrance to innovation. Sobon says his PR campaign wasn't meant to pressure the Federal Circuit, but rather to take advantage of the attention given the Bilski hearing.
Though Sobon wouldn't say so, his PR push certainly could be preparation for a U.S. Supreme Court review, a lobbying campaign for new legislation, or even a nudge aimed at the U.S. solicitor general's office, says Joseph Cianfrani, partner at Knobbe Martens Olson & Bear and another AIPLA director. Says Weil, Gotshal & Manges partner Ed Reines, president of the Federal Circuit Bar Association: "This is likely Act I of a two-act play."
