Monday, November 3, 2008

Tax Plans are not patentable

One of the weirder discussions in the tax world has been the question of whether a fancy tax plan, devised by lawyers and accountants, could be patentable. Stories abounded regarding whether such authors (inventors?) could sue other practitioners for patent infringement for using similar strategies. It was all potentially lucrative for those holding patent rights.

The idea was based on a view that certain business ideas are patentable. However, that view has taken a serious hit in the Federal Circuit Court of Appeals.

As background, 35 U.S.C. 101 states that a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" are patentable. The Supreme Court has held that the scope of the statute is very broad, but that "laws of nature, natural phenomena, and abstract ideas" are not patentable.

However, in 1998, State Street Bank & Trust Co. v. Signature Financial Group, Inc. 149 F.3d 1369, opened the door to allowing the patenting of business processes. This led to the idea that tax planning processes could be patentable as well.

But State Street has been overruled. In the Bilski case, just decided, the Court of Appeals held that a method of hedging risk in the field of commodities trading is not patentable. In essence, the method was too abstract:

We hold that the Applicants' process as claimed does not transform any article to a different state or thing. Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.

This language seems to effectively prevent any sort of legal strategy from being patented.

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