Tax Patents - Method of Optimizing a Reduced Tax Portfolio

Hello Inventors:

Well, the time has come yet again. Dreaded tax day. Accounting and investment firms now have another concern, potential patent infringement. Interestingly, a search through the USPTO database for issued patents relating to tax minimization showed over 50 hits. Yes, patents for minimizing taxes!

A Tax minimization patent would likely fall into a group of patents known as business method patents. Yes, in the United States business methods are patentable as long as they meet the new, useful and nonobviousness test for patentability. One of the most popular business method patents is the 1-Click patent used by Amazon for automatic payment of merchandise (which is currently under re-examination).

Many countries do not allow the patenting of pure business methods. For instance in Europe, there must be a technical contribution to the state of the art. The U.S. does not have this technical contribution requirement.

Frequently business method patents are not pure business methods but instead are a hybrid including a business method in combination with a computer program. These are commonly referred to as computer implemented inventions. However, mere automation of a known business method probably won't get you very far.

You can read more about business method patents and the patent process at our patent web page.

Keep inventing!


Raymond

Amazon's 1-Click Patent Under Reexamination

Hello Inventors:

I recently read an article regarding the reexamination of the 1-Click business method patent held by Amazon.

Regular readers of this blog will quickly recognize that I am a proponent of reexamination. I believe reexamination is a cost effective alternative to patent litigation as I suggested in a previous blog. It also lets society question the validity of a patent without the threat of being sued. For the attorneys out there, there is no standing issue. A reexamination may be declared upon a showing that there is "a substantial question of patentability." Essentially, a party requests reexamination of an issued patent and provides documents in support of the request.

Reexaminations come in two basic forms:

• Exparte - or between the USPTO and the Applicant; and
• Interpartes - or the requestor is more active in the re-exam.

One interesting feature about reexaminations is that the Applicant must provide the requestor with a copy of each submission to the USPTO. This includes updated information disclosure statements (IDS). The article mentions that even Norm quotes from cheers were submitted in an IDS. I wonder if they submitted my personal favorite, "It's a dog eat dog world out there and I'm wearing Milkbone underwear." Probably not.

Speaking of the duty (not to mention the common courtesy between attorneys) to provide references to the opposing party, in the 1-Click instance it appears that this was not being done. I'm sure this was not done intentionally, right Amazon?

You can track the progress of the case by monitoring the requestor's blog.

More information about reexaminations may be found by visiting our patent law firm's web page, www.BiotechBeachLaw.com.

Keep inventing!

Raymond