Linda M. Beale (Wayne State) has posted Is Bilski Likely the Final Word on Tax Strategy Patents? Coherence Matters, 9 J. Marshall Rev. Intell. Prop. L. ___ (2009), on SSRN.  Here is the abstract:

The explosion of business method patents after the Federal Circuit’s State Street decision — in particular, the granting of patents on applications derived from the positive law, such as tax strategy patents — has engendered a growing controversy over the nature of the patent system itself within the tax bar, the Patent Office, in Congress and in the courts, reflecting disagreement about the proper role of patent law in an economy in which services and financial transactions have taken on an increasingly significant role. Bar associations, accountancy groups and other tax practitioners have generally viewed the development of tax strategy patents with alarm. The Patent Office at first defended, and then questioned, the broad interpretation of patent eligibility that permits patenting of ideas about how to structure a tax-savings transaction. In the context of an ongoing consideration of major reforms to the law governing the issuance of patents, Congress proposed an outright ban of patents on tax planning strategies, though it has not yet enacted a ban either in isolation or as part of the reform bill. The Federal Circuit, in the meantime, appeared to do an about-face from its expansive State Street interpretation of the Patent Act’s scope in a series of opinions culminating in In re Bilski, in which the court essentially repudiated the State Street test and set forth a new 'machine or transformation' standard.

In previous articles, I have argued that tax strategy patents should not be permitted, based on a number of practice, institutional and policy concerns. This article rearticulates and extends that analysis in the context of the Supreme Court’s acceptance of certiorari in Bilski. Part I briefly reviews the Constitutional and legislative context in which tax strategy patents must be considered and the courts’ shifting tests for business method patents. Part II articulates a fundamental concept of tax law, the anti-manipulation value, in its various manifestations, and demonstrates that applying patent law to tax strategies flounders on three major fallacies — the invention fallacy, the innovation incentives fallacy, and the public benefit fallacy. Part III then considers whether the Bilski 'machine or transformation' test is sufficient to block inappropriate patenting of tax strategies. This Part also speculates about the potential for the Supreme Court, in its review of Bilski, to strengthen the patent-eligibility test in a way that acknowledges the problematic nature of tax strategy patents. Part IV concludes.