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Thursday, October 30, 2008

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.)

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Comments

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.

Posted by: Mark Nowotarski | Nov 1, 2008 4:35:07 AM