MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision

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Question:

Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose?

Answer:

A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2124.01  of the MPEP.  The following is a brief summary of section 2124.01.

2124.01 Tax Strategies Deemed Within the Prior Art

This section covers tax strategies deemed within the prior art. The America Invents Act (AIA) provides that for purposes of evaluating an invention for novelty and nonobviousness under 35 U.S.C. 102 and 103, any strategy for reducing, avoiding, or deferring tax liability (hereinafter “tax strategy”), whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. As a result, applicants will no longer be able to rely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish them from the prior art.

This section also includes examples that are directed to computer-implemented methods. Essentially, a computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose.