Federal Circuit Overrules Tax Strategy Patent Linchpin

The Federal Circuit today issued its long awaited decision in In re Bilski, No. 2007-1130 (Fed. Cir. Oct. 30, 2008), rejecting the patentability test (State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998)) which was the linchpin in the spate of tax strategy patents issued recently. For coverage of the court's 132-page opinion, see Patently-O. For prior TaxProf Blog coverage, see AICPA Asks CAFC to Deny Tax Strategy Patents (4/14/08). (Hat Tip: David Kirk.)

About the Author

Paul Caron

Paul Caron was named Duane and Kelly Roberts Dean of Pepperdine University School of Law on June 1, 2017. Dean Caron joined the Pepperdine faculty in 2013 after serving as the Dorothy and Leonard Straus Distinguished Visiting Professor of Law in the spring semesters of 2010 through 2013. He served as Associate Dean for Research and Faculty Development at Pepperdine in 2015-2017. Before coming to Pepperdine, he was Associate Dean of Faculty and Charles Hartsock Professor of Law at the University of Cincinnati College of Law.

4 responses to “Federal Circuit Overrules Tax Strategy Patent Linchpin”

Mark Nowotarski

November 1, 2008

The biggest winners from the Bilski decision might be technology consultants. As a patent agent specializing in tax patents, one of the strategies I’ve emphasized for financial professionals seeking a patent is for them to spend a little extra money to hire a technology consultant (e.g. actuary, IT professional, etc.) to spec out the technical implementation of their inventions. We then include those specifications in the patent application with the tech consultant being listed as a coinventor.
The strategy has been very successful and with Bilski taking such a strong stand on the importance of tying a new financial invention to a “particular machine”, it should be even more so in the future.