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).

 

Where to find January’s flipbook issue

Starting this month, all Association magazines — the Journal of Accountancy, The Tax Adviser, and FM magazine (coming in February) — are completely digital. Read more about the change and get tips on how to access the new flipbook digital issues.

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