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2124    Exception to the Rule That the Critical Reference Date Must Precede the Filing Date

MPEP SECTION SUMMARY In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date.

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 2124.01   Tax Strategies Deemed Within the Prior Art

MPEP SECTION SUMMARY 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.

Any tax strategy will be considered indistinguishable from all other publicly available information that is relevant to a patent’s claim of originality.

This provision aims to keep the ability to interpret the tax law and to implement such interpretation in the public domain, available to all taxpayers and their advisors.

The term "tax liability" is defined for purposes of this provision as referring to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.

There are two exclusions to this provision.

1. The provision does not apply to that part of an invention that is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing.
   
2. The provision does not apply to that part of an invention that is a method, apparatus, technology, computer program product, or system, that is used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

This provision took effect on September 16, 2011, and applies to any patent application that is pending on, or filed on or after, September 16, 2011, and to any patent issued on or after September 16, 2011

• Accordingly, this provision will apply in a reexamination or other post-grant proceeding only to patents issued on or after September 16, 2011.

Examples Directed to Computer-Implemented Methods

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.

The presence of limitations relating to the tax strategy would not cause a claim that is otherwise within the prior art to become novel or non-obvious over the prior art.

• Thus, for purposes of applying art to a software-related invention under 35 U.S.C. 102 and 103, claim limitations that are directed solely to enabling individuals to file their income tax returns or assisting them with managing their finances should be given patentable weight, except that claim limitations directed to a tax strategy should not be given patentable weight.

 

» 2125 Drawings as Prior Art