Robert A. McFarlane
Publications
The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation | ||
Abstract The attorney-client privilege is a testimonial privilege that allows clients to refuse to disclose, and to prevent others from disclosing, confidential communications with their attorneys that are made for the purpose of obtaining or providing legal advice. Both the Supreme Court and the Federal Circuit have ruled that the privilege applies in the context of patent prosecution. However, U.S. attorneys face considerable uncertainty when asserting the attorney-client privilege to protect confidential communications between clients and their foreign patent agents and attorneys. This uncertainty arises because U.S. courts largely decide privilege disputes pertaining to foreign patent prosecution by applying the law of the nation in which the foreign patent application was filed. | agent application attorney client communication court foreign patent privilege prosecution Volume 23 Issue 4 Page 667 | |
Business Methods and Patentable Subject Matter following In Re Bilski: is “Anything Under the Sun Made by Man” Really Patentable? | ||
and Abstract The Federal Circuit’s decision in In re Bilski sought to answer once and for all whether, and to what extent, business methods may be patented and to articulate the standard that governs the patentability of all processes. The court’s majority opinion both confirmed that there is no exclusion preventing the patenting of business methods and announced a new “machine-or-transformation” test to analyze patents on processes in all fields. Given the controversy surrounding this decision, it is not surprising that the Supreme Court subsequently granted certiorari. | bilski business claim court machine method patent process subject transformation Volume 26 Issue 1 Page 35 | |
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