Evidentiary Problems of Multidisciplinarity in the Litigation of Business Method Patents

A proliferation of newly issued tax-related patents has resulted in concern and confusion among tax practitioners. Tax practitioners argue that the tax strategies claimed in the patents have been used for many years and do not meet the novel and nonobvious requirements of patent law. Additionally, tax professionals are concerned that enforcement of these patents will limit their ability to serve as advocates for their clients and recommend tax strategies that legally minimize their clients' taxes. Tax professionals also worry that they may be in jeopardy of being sued as defendants in tax-related patent infringement cases. In this paper, the authors review the basics of patent law, discuss business method patents, and analyze five tax strategy patents in order to determine whether the inventions claimed in the patents meet the nonobviousness and novelty requirements of patent law. The authors examine articles, IRS Revenue Rulings, Private Letter Rulings, continuing education materials, and other evidence in publicly available printed publications and conclude that the “prior art” in the field was sufficient at the time of the patent applications in order to potentially question the validity of the patents.

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11. Patentability

Contemporary Intellectual Property ◽

10.1093/he/9780198799801.003.0011 ◽

2019 ◽

pp. 401-484

Author(s):

Abbe Brown ◽

Smita Kheria ◽

Jane Cornwell ◽

Marta Iljadica

Keyword(s):

Intellectual Property ◽

Patent Application ◽

Computer Software ◽

Patent Law ◽

Controversial Issue ◽

Inventive Step ◽

Business Method Patents ◽

Biotechnological Inventions

This chapter explores the criteria that are applied by an intellectual property office in examining a patent application. These applies to all forms for innovation and are novelty, inventive step, and industrial applicability. The chapter also explores additional requirements and barriers which apply in relation to biotechnological inventions, which has proved to be a particularly controversial issue in Europe, and the patentability of computer software and related inventions, such as business method patents. The chapter demonstrates the evolution in legal and policy thinking in these two fields, which provide a means to an understanding of developments in patent law in general.

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