Supreme Court Grants Cert. in Bilski Case


On Monday, the U.S. Supreme Court granted a writ of certiorari in the case of Bilski v. Doll, Sup. Ct. Dkt. No. 08-964. The Court has agreed to review the Federal Circuit’s earlier decision in the case and address the question of when business methods are eligible for patent protection.

 

Bilski involves commodities trading, but the Supreme Court’s holding in the case could have an impact on the area of tax strategy patents, since those patents are a type of business methods patent.

 

In October, the Federal Circuit ruled that to be patentable a business process must meet a “machine or transformation” test (In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)). The Federal Circuit held that only a business method that is tied to a particular machine or apparatus or that “transforms a particular article into a different state of things” is eligible for patent protection. In so holding, the Federal Circuit expressly rejected its earlier State Street Bank decision, which was the first case to establish that business methods are patentable (State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)).

 

For more on the patenting of tax strategies in general, see Ransome and Sherr, “ Patenting Tax Ideas ,” 38 The Tax Adviser 456 (Aug. 2007).

 

SPONSORED REPORT

Tax reform complicates year-end tax planning

Get your clients ready for tax season with these year-end tax planning strategies, which address how to make the most of recent tax law changes, such as the new deduction for qualified business income and the cap on the deductibility of state and local taxes.

VIDEO

What RPA is and how it works

Robotic process automation is like an Excel macro that can work on multiple applications, says Danielle Supkis Cheek, CPA. RPA can complete routine, repetitive tasks such as data entry, freeing up employee time from lower-level chores.