Patent Prosecution
1/28/2008 4:48:30 PM EST
John S. Paniaguas on the Patentability of Tax Strategies and the Return to State Street Bank & Trust v. Signature Financial Group
Partner, Katten Muchin Rosenman LLP; Adjunct Professor, DePaul University College of Law
The decision in State Street Bank & Trust v. Signature Financial Group, 149 F. 3d 1368 (Fed. Cir. 1998), has spawned the issuance of utility patents on business methods, including patents covering tax strategies. Tax strategy patents have become an ever-increasing source of anxiety for tax practitioners and pose a significant threat of litigation in an area of law normally unfamiliar to tax practitioners. In discussing the current state of tax strategy patent prosecution, John S. Paniaguas writes that “[M]isinterpretation of the ruling in [In re] Lundgren may explain the proliferation of the filings of patent applications and issuance of patents involving … subject matter relating to tax strategies.” Mr. Paniaguas adds that the later holding in “In re Comiskey, 499 F. 3d 1365; 2007 US App. Lexis 22414 (Fed. Cir 2007) … will have an adverse impact on the issue of whether patents covering tax strategies constitute patentable subject matter under 35 U.S.C. § 101.”
Create an account or login to post comments.