107 Colum. L. Rev. Sidebar 1 (2007)

handle is hein.journals/sidbarc107 and id is 1 raw text is: COLUMBIA LAW REVIEW
VOL. 107                FEBRUARY 14, 2007                PAGES 1-3
Andrew A. Schwartz*
In 2003, for the first time in its 170-year history, the United States
Patent Office began awarding patents for legal methods, such as tax
strategies, in addition to traditional inventions such as Tylenol or the
telephone. Commentators-including the Commissioner of Internal
Revenue, the General Counsel of the Patent Office, and the Chair of the
ABA Intellectual Property Law Section-have accepted the Patent
Office's power to grant legal method patents (as a type of business
method, which were ruled patentable by the federal courts in 1998), but
at the same time have criticized this new type of patent on policy
The policy concerns surrounding legal method patents are
significant. Although the patent system is designed to prevent latecomers
from free riding on another's invention, thus reducing the incentive
to invent in the first place, the public has always been actively
encouraged to free ride on legal developments. Indeed, that is the whole
point of legal precedent: to establish rules of law that all must obey.
There is something deeply disturbing about granting a private
citizen a monopoly, enforceable by the courts, over a method of
complying with the tax code or, for that matter, any other law. Moreover,
no attorney wants to pause before advising a client in order to run a
patent search to make sure that no one owns the advice she is about to
give. And what client wants to pay extra to his or her lawyer to cover
licensing fees?
Although granting patents to tax strategies has been a subject of
policy debate, noticeably absent from this discussion has been any
consideration of whether legal methods, including tax strategies, are
patentable in the first place. At a recent hearing of a House Ways and
Means Subcommittee on issues relating to the patenting of tax advice,
* Mr. Schwartz, an associate in the law firn of Wachtell, Lipton, Rosen & Katz, is a
registered patent attorney. This article is premised on his work, Andrew A. Schwartz, The
Patent Office Meets The Poison Pill: Why Legal Methods Cannot Be Patented, 20 Harv.
J.L. & Tech. 333 (2007).


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