Tax Strategies Deemed Within Prior Art
In section 14 of the America Invents Act, a limitation is placed on what can be used to differentiate claimed inventions from prior art when being evaluated under 35 U.S.C. §§ 102 and 103 (novelty and obviousness).
Any strategy for reducing, avoiding, or deferring tax liability is insufficient to differentiate a claimed invention from the prior art. Applicants will not be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish those claims from the prior art.
This does not apply to the component of the invention that is a method, apparatus, technology, computer program product, or system that is used solely for preparing a tax or information return or that is used solely for financial management, provided it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.
Claimed inventions that fall into this category may still be able to obtain a patent, but not on the grounds that the tax strategy is the only novel or non-obvious part of the invention.
Upcoming Events/Key Dates
This provision went into effect on September 16, 2011, and applies to all patent applications pending on, or filed on or after, that date. It also applies to any reexamination or post-grant proceedings on patents issued on or after September 16, 2011.