Tax Strategies Overview

Objectives to know about Tax Strategies specific to the AIA

• Understand the purpose of the AIA’s treatment of tax strategies
• Identify the key laws and rules (37 CFR and 35 USC) pertaining to Tax Strategies specific to the AIA
• Apply the laws and rules pertaining to Tax Strategies specific to the AIA to real-world scenarios

Key Laws and Rules (37 CFR and 35 USC) pertaining to Tax Strategies specific to the AIA

• 35 U.S.C. § 101: Inventions patentable
• 37 CFR § 1.904: Subject matter eligibility of tax strategies

Comprehensive, detailed, e-learning module content for Tax Strategies specific to the AIA

Module 1: Introduction to Tax Strategies

What is a tax strategy?

A tax strategy is any strategy for reducing, avoiding, or deferring tax liability. Tax strategies can take many forms, such as business structures, investment strategies, and estate planning techniques.

Purpose of the AIA’s treatment of tax strategies

The purpose of the AIA’s treatment of tax strategies is to ensure that tax strategies are not patentable subject matter. This is because tax strategies are generally considered to be laws of nature, natural phenomena, or abstract ideas, which are not patentable under 35 U.S.C. § 101.

Module 2: Applying the laws and rules pertaining to Tax Strategies specific to the AIA

35 U.S.C. § 101

35 U.S.C. § 101 defines patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Tax strategies do not fall into any of these categories, and are therefore not patentable subject matter.

37 CFR § 1.904

37 CFR § 1.904 provides additional guidance on the patentability of tax strategies. This section states that a tax strategy is not patentable subject matter even if it is implemented using a computer or other technological means.

Real-world scenarios

Here are some examples of real-world scenarios where the AIA’s treatment of tax strategies may be an issue:

• A company develops a new tax planning strategy that allows it to significantly reduce its tax liability. The company files a patent application for the strategy, but the USPTO rejects the application on the grounds that tax strategies are not patentable subject matter.
• An individual develops a new investment strategy that allows him to avoid paying taxes on his capital gains. The individual files a patent application for the strategy, but the USPTO rejects the application on the grounds that tax strategies are not patentable subject matter.
• A law firm develops a new estate planning technique that allows its clients to reduce their estate taxes. The law firm files a patent application for the technique, but the USPTO rejects the application on the grounds that tax strategies are not patentable subject matter.

1. How Does Section 14 Of The AIA Affect The Patentability Of Tax Strategies?
   1. Applicants will no longer be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims in order to distinguish the claims from the prior art.
2. If I Have A Patent Issued Before September 16, 2011, That Undergoes Reexamination, Will Section 14 Of The AIA Apply During The Reexamination?
   1. No. Section 14 of the AIA does not apply to patents issued r September 16, 2011. Section 14 of the AIA applies to any patent application that is pending on, or filed on or after, September 16, 2011.
3. What Is The Effective Date Of The Tax Strategy Provisions In The AIA?
   1. The effective date of the tax strategy provisions is September 16, 2011