The AICPA has filed an amicus brief in In re Bilsky, No. 2007-1130 (Fed. Cir. 2/15/08), requesting that the court deny patent protection to tax strategies. Here is part of its Summary of Argument:
The case addresses the patentability criteria for processes. This Court’s decision in State Street Bank & Trust v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), endorsed the patentability of business methods as processes.
"Tax strategies" are one subset of business methods that increasingly have been patented since State Street. … Since this Court’s decision in State Street, 65 patents that include claims for tax strategies have been granted, and 110 additional patent applications for tax strategies are pending. Patents for tax strategies have been granted in a variety of areas, including the use of financial products, charitable giving, estate and gift tax, pension plans, tax deferred real estate exchanges, and deferred exchanges.
Tax strategies are not proper patentable subject matter under Section 101 of the Patent Act or the Patent Clause of the Constitution because they (1) preempt the public’s free use of certain provisions of the tax laws, (2) do not meet the Supreme Court’s criteria for patentability of processes, and (3) fail to promote the useful arts. … Furthermore, lawyers and accountants may be unable to challenge the validity of tax strategy patents or to defend themselves from patent infringement lawsuits because of their professional obligations of privilege and confidentiality to their clients.
(Hat Tip: David Kirk.) For a rundown of all of the briefing in the case, see Patently-O, Ex Parte Bilski: On the Briefs (4/10/08). For prior Patently-O coverage of the case, see:
