INTRODUCTION :: Imagine, before advising each client, having to confer with the U.S. Patent and Trademark Office (USPTO) to determine whether another lawyer already owns a patent to the legal strategy you wish to propose. Imagine having to pay someone so your client can follow legal advice you wish to impart. Worse yet, imagine having to forego the most favorable legal course of action for your client simply because your client cannot afford it! While these possibilities may seem outlandish, this is precisely what courts may soon decide.
Judicial affirmation of the patentability of legal strategies could become a stark reality sooner than lawyers think. In light of our patent system’s history, this prospect should come as no surprise. Both federal courts and the USPTO have continually pushed the envelope of patentable subject matter. With increasing vigor, the USPTO issues patents in previously unpatentable areas.
Take Robert Slane, a financial adviser in Florida, for instance. In 2003, Slane received the first tax strategy patent, which covers the use of unqualified stock options in grantor-retained annuity trusts, or GRATs. Just three years later, Slane succeeded in filing the first suit alleging infringement of a patented tax strategy. Slane sued former chairman and CEO of Aetna Insurance, John Rowe, alleging Rowe, as part of an estate plan, funded several GRATs covered by Slane’s patent. While the parties settled in March 2007, courts will likely render legal rulings on the patentability of other legal methods in the future. This possibility seems particularly likely as professionals like Slane pursue similar measures to protect their patent rights, and as the number of patents issued for various methods increases.
Since the USPTO began issuing tax strategy patents in 2003, many insist patentability for other legal methods is inevitable. To be sure, this notion will be contested. History reveals that with virtually every technological development, professionals grapple with patentability. Despite concerns about extending patent protection, history foretells that the case for patentability will likely prevail. Whatever qualms critics express about patentability, professionals learn to operate within the parameters of patent protection. Because industries in the past have adapted to patent protection, many patent experts discount concerns within the legal profession. Since other professions have adapted to patent protection, the argument goes, lawyers should adapt to patent protection as well.
Indeed, not long after courts affirmed software patentability, the industry learned to adjust -albeit not without a fight. Similar reactions occurred in 1998 when the Federal Circuit extended patent protection to business methods. Tax strategies, today’s latest rave in the patent arena, have also entered the realm of patentability with ease, with the USPTO establishing a patent classification almost exclusively for tax strategies and issuing a number of patents as a result. Since tax strategies are not significantly distinct from other kinds of legal methods, the USPTO could theoretically grant patents for legal methods in other areas. In fact, the USPTO already has.
With patentability efforts penetrating most professions, one might question whether patent protection will tamper with one of the underlying traits that propels our legal system-creativity. Creativity lies at the crux of any successful career. Successful lawyering is often rooted in the ability to innovatively combat complex societal problems while simultaneously serving a client’s interests. This dual responsibility coupled with the unique nature of the lawyer-client relationship sets the legal profession apart from many others. Whether relying on personal creativity or “following the paths others have blazed,” creativity, used as a tool in the legal profession, can prove life-altering-both for the client and the lawyer. As this Note will demonstrate, imposing legal restrictions on creativity has the potential not only to frustrate good lawyering efforts but also to impinge on overriding societal interests.
With rumors buzzing throughout the legal community on reported patent filings for legal strategies, many wonder: Will courts extend patent protection to innovative legal methods? Would such court findings undermine societal interests? More specifically, given an attorney’s professional obligations toward clients, would patent protection contravene societal interests and unnecessarily hamper a client’s best interests?
It is beyond the scope of this Note to enumerate all the problems associated with patenting legal methods and strategies. Rather, this Note aims to engage in a normative analysis to determine whether patenting legal strategies should occur in light of a lawyer’s professional duties toward a client. The primary objectives of this discussion are to raise awareness within the legal community and cast light on a number of concerns that all lawyers should consider. With so much at stake, it is incumbent that all lawyers examine the repercussions stemming from patenting legal strategies.
This Note argues patent protection should not extend to legal methods because of the professional responsibilities lawyers owe to the profession and to clients. Part II explains why legal methods merit discussion today. To appreciate the effects legal method patents could have on the legal profession, Part II then presents an overview of pertinent patent law and explains how legal methods are likely eligible for patent protection. Part III raises the question whether legal methods should receive patent protection in light of social and economic considerations. Part IV addresses implications for a lawyer’s professional obligations if courts extend patent protection over legal methods. And Part V considers who bears the ultimate costs from legal method patents.
November 2015, Vol. 67, No. 6
Liesa L. Richter, Posnerian Hearsay: Slaying the Discretion Dragon
Sapna Kumar, Regulating Digital Trade
W. Keith Robinson, Economic Theory, Divided Infringement, and Enforcing Interactive Patents
Sandra F. Sperino, Retaliation and the Reasonable Person