Tax Strategy Patents after the America Invents Act: The Need for Judicial Action

By Closson, Nichelle | Journal of Corporation Law, Fall 2012 | Go to article overview
Save to active project

Tax Strategy Patents after the America Invents Act: The Need for Judicial Action

Closson, Nichelle, Journal of Corporation Law

     A. Patent Law Generally
     B. Tax Strategy and Business Method Patents
        1. The State Street Decision
        2. The Reaffirmance of Business Method Patents: Bilski
     C. The Patent Reform Bill
        1. History and Status of Legislative Action
        2. The Leahy-Smith America Invents Act
     A. The Impacts of Tax Strategy Patents
     B. The Impact on Corporations
     C. Novel and Nonobvious
     D. Effect of the America Invents Act
        1. Software
        2. Prior Art
     A. Congressional Action
     B. In the Courtroom
        1. Policy Issues
        2. Prior Art, Nonobviousness, and Novelty


Imagine an accounting firm trying to give advice to its clients about the most effective ways to minimize their tax liability. Associates at the firm may point out the available credits and deductions, and discuss other techniques and strategies the client may be able to use to their advantage. But wait, there is a snag. After conducting some research, an associate discovers that one of the methods recommended to the client has recently been patented. A commonly used strategy employed by tax professionals and average taxpayers alike is now only available to those willing to pay the patent owner royalties for its use. The associate will now have to explain to her client that they may have to pay more in taxes this year because this money-saving strategy is protected by a patent. This is only one example of the threats posed by tax strategy patents, the ability to patent a tax-saving technique and derive income from others who are only seeking to save as much money as possible.

With the passage of the Leahy-Smith America Invents Act (the Act) in September of 2011, tax strategy patents became one of only three types of business methods that Congress has prohibited the Patent and Trademark Office from issuing--"the other two are medical procedures (because doctors should be able to use any technique [to save a patient's life]) and nuclear technology (for the obvious reasons)." (1) The passage of the Act finally ended years of debate and controversy surrounding the patentability of tax strategies. This Note examines that controversy, gives a general history of U.S. patent law, and also gives a more specific legislative timeline leading up to the Act. This Note then analyzes what will happen to the remaining tax strategy patents that the Act did not revoke, and it ultimately argues that courts should be the ones to decide this issue, and they should choose to invalidate the patents.


Currently, there are more than 160 issued tax strategy patents in the United States, and another 167 applications were pending when the Leahy-Smith America Invents Act was signed into law. (2) The Act reforms the current U.S. patent system and ceases the granting of tax strategy patents. (3) While the new Act does not affect the existing patents, the new law deems the pending applications prior art. (4)

This Part gives a brief history of the current state of patent law in the United States and defines both tax strategy patents and business method patents. It gives a historical account of the relevant precedent protecting such patents and explores the public opposition to granting such patents. Finally, it discusses Congress' recent Patent Reform

Bill that ended the patentability of tax strategies.

A. Patent Law Generally

"Patent law is as old as the U.S. government" (5) and is grounded in Article I, Section 8 of the Constitution. (6) This intellectual property clause grants the federal government the power to enact legislation regarding patents and the protection of patent owners. (7) A patent is a federally granted right that enables the owner to exclude others from "mak[ing], us[ing], offer[ing] to sell, or sell[ing]" the invention without the owner's consent.

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
Loading One moment ...
Project items
Cite this article

Cited article

Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

Cited article

Tax Strategy Patents after the America Invents Act: The Need for Judicial Action


Text size Smaller Larger
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

While we understand printed pages are helpful to our users, this limitation is necessary to help protect our publishers' copyrighted material and prevent its unlawful distribution. We are sorry for any inconvenience.
Full screen

matching results for page

Cited passage

Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

Cited passage

Welcome to the new Questia Reader

The Questia Reader has been updated to provide you with an even better online reading experience.  It is now 100% Responsive, which means you can read our books and articles on any sized device you wish.  All of your favorite tools like notes, highlights, and citations are still here, but the way you select text has been updated to be easier to use, especially on touchscreen devices.  Here's how:

1. Click or tap the first word you want to select.
2. Click or tap the last word you want to select.

OK, got it!

Thanks for trying Questia!

Please continue trying out our research tools, but please note, full functionality is available only to our active members.

Your work will be lost once you leave this Web page.

For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

Already a member? Log in now.

Are you sure you want to delete this highlight?