Intellectual Property Insights
Analysis and practical guides on intellectual property.
446 articles, checklists, and guides on intellectual property law, written by the attorneys at MC Law. Every piece is general information, not legal advice—for a specific matter, contact the firm.
Technology Transfer Toolkit: Invention Reporting, License Terms, and Sponsored Research
This toolkit collects the documents a technology transfer practice runs on, from the invention disclosure form that starts every statutory clock through the utilization report request that keeps an institution compliant. It includes a deadline tracker keyed to the Bayh-Dole obligations, present assignment language, a license term sheet with the provisions that actually get negotiated, a net sales definition with combination-product allocation, sponsored research and material transfer terms, inter-institutional agreement structure, and startup-specific accommodations. Each template is annotated with its purpose, its owner, and the failure it prevents. Each template carries drafting notes on the federal obligations that cannot be negotiated away. Adapt everything to the institution's policies and the funding agency's terms.
Bayh-Dole Compliance Checklist: A Practical Checklist
Bayh-Dole compliance is a system of deadlines and records, and institutions lose rights for administrative reasons rather than substantive ones. This checklist runs the full sequence: identifying subject inventions when funding is mixed, meeting the disclosure and election deadlines, including the government support statement, flowing the statutory conditions through to licensees, collecting the utilization data that only licensees possess, and maintaining the title records that determine whether a patent is enforceable at all. It includes sections for licensees receiving Bayh-Dole flow-through terms, for sponsored research negotiation, and for audit readiness. It runs from invention disclosure through election of title, filing, and utilization reporting. Every item is written so that a "no" tells you what to do next.
Licensing University Technology: A Practical Guide for Companies and Inventors
Licensing technology out of a university is a negotiation between parties with genuinely different constraints, and most of the friction comes from each side not understanding the other's. This guide explains both. For companies, it covers what a technology transfer office can and cannot agree to, how to run diligence on a university patent, and which terms are movable. For inventors and founders, it covers disclosure timing, the publication decisions that destroy value, conflict of interest management, and what a startup license should look like. It includes a term sheet, a negotiation sequence, budget expectations, and the errors that reliably cost money on both sides.
University Technology Transfer and Bayh-Dole: Who Owns Federally Funded Inventions
The Bayh-Dole Act let universities and small businesses keep title to inventions made with federal money, and it reshaped American research commercialization more than any other statute of its era. This article explains how it works: what makes an invention a subject invention, the disclosure and election deadlines that forfeit rights when missed, the government's retained license and march-in rights, and the domestic manufacturing preference. It covers the assignment problem the Supreme Court identified in Stanford v. Roche and how institutions fixed it, the mechanics of university licensing from disclosure through startup formation, and the recurring negotiation points between institutions and companies over sponsored research, background rights, and publication.
Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs
This toolkit collects the working documents of a border enforcement and anti-diversion program, from the material differences matrix that makes every other tool possible through the metrics dashboard that shows whether the program is working. It includes the Lever-rule petition structure, a product identification guide outline written for customs officers rather than lawyers, test purchase and forensic protocols, a code tracing log, channel audit and termination materials, marketplace complaint language, and the distribution agreement clauses that give diversion consequences. Each template is annotated with its purpose, its owner, and the failure it prevents. Each template carries drafting notes on what CBP is looking for and what it ignores. Adapt everything to the mark, the product, and the import channel.
Registering a Copyright in Software: A Practical Checklist
Software is protected by copyright the instant it is written, but registration is the gateway to federal court, statutory damages, and attorney's fees. This checklist walks a developer, founder, or counsel through registering a computer program: confirming ownership and clearing contractor and open-source issues, choosing the application, completing the limitation-of-claim field, and preparing a source-code deposit using the first-25-and-last-25 rule and the special trade-secret redaction options that let you register without surrendering your crown jewels. It covers derivative versions, screen displays, the Rule of Doubt for object code, and special relief when the source is gone. It cites the deposit mechanics in the Compendium and the timing rules of Section 412. Verify current fees and deposit options at copyright.gov before filing.
Patent Cases to Watch in the Second Half of 2024: Implications for IP Strategy
This long-form analysis surveys the patent decisions and pending issues that reshaped patent law around 2024 and into 2025, and explains what each means for portfolio owners. It covers the Federal Circuit's en banc LKQ v. GM decision overhauling design-patent obviousness, the design-patent damages framework that makes those patents so valuable, the enablement fallout from Amgen v. Sanofi, the persistent uncertainty of Section 101 eligibility after Alice and Mayo, the Supreme Court's history-and-tradition turn in Vidal v. Elster, the USPTO's evolving examination guidance, developments at the PTAB including the long-running Fintiv discretionary-denial saga, and trends in patent damages and apportionment. For each area the article states the issue, its status and known aftermath, and the concrete IP-strategy implication for prosecution, portfolio management, and litigation. It is written as durable strategic guidance, candidly flagging where outcomes have continued to evolve since 2024. The goal is to help inventors, in-house counsel, and litigators position their portfolios against a moving body of law.
Customs IP Enforcement Checklist: A Practical Checklist
Border enforcement of intellectual property rights runs on documents the rights holder supplies, and programs fail for administrative reasons rather than legal ones. This checklist covers the whole sequence: recording marks and copyrights, documenting material differences and filing a Lever-rule petition, building identification materials officers can actually use, serializing so goods can be traced, running test purchases and forensic examination, auditing the channel, and responding when Customs detains a shipment. It closes with the metrics that show whether the program is working and the errors that cause it to consume budget without reducing volume. It sequences recordation, enforcement requests, and the response to a seizure notice. Every item is written so that a "no" tells you what to do next.
Stopping Gray Market and Counterfeit Imports: A Practical Guide
Stopping unauthorized imports is an operational program with a legal layer, not a litigation strategy. This guide walks through building the program in the order that makes each step work: recording marks with Customs, documenting material differences, preparing the identification materials officers actually use, serializing so goods can be traced, and rewriting distribution agreements so diversion has consequences. It then covers the investigation—test purchases, forensic examination, and code tracing—and the enforcement channels available, from border detention through marketplace complaints to litigation. It includes a first-ninety-days plan, a budget, and the errors that cause programs to consume resources without reducing volume.
Gray Market Goods and the First Sale Doctrine: Parallel Imports, Exhaustion, and Border Enforcement
Gray market goods are genuine products sold outside the channel their maker intended, and whether that is lawful depends on which intellectual property right you invoke and where the goods were first sold. This article explains the exhaustion rules for copyright, patent, and trademark separately, because they differ in ways that decide cases. It covers the Supreme Court decisions that established international exhaustion for copyright and patent, the material differences doctrine that keeps trademark law available against parallel imports, and the customs framework that determines what actually gets stopped at the border. It closes with the contractual and commercial tools that work where intellectual property law does not.
Freedom to Operate and IP Clearance Toolkit: Clearing the Path Before You Launch
This toolkit is a high-level roadmap and curated library guide for clearing intellectual property risk before launching a product, brand, or codebase. It walks the full clearance process: why to clear before launch, conducting a patent freedom-to-operate search, trademark clearance, copyright and open-source clearance, the role of opinions of counsel in defusing willful-infringement exposure after Halo v. Pulse, designing around blocking rights, and ongoing risk management. At each stage it links the firm's articles and checklists alongside the search tools and primary authorities a practitioner needs—USPTO Patent Public Search, Espacenet, Google Patents, USPTO trademark search, and the willfulness/enhanced-damages framework of 35 U.S.C. § 284. It is written for product and brand teams, founders, in-house counsel, and outside clearance counsel. Read the roadmap, then drill into the linked search checklists. FTO is a risk-management exercise, not a guarantee—calibrate depth to the stakes.
False Advertising Toolkit: Substantiation Files, Surveys, and Injunction Briefing
This toolkit collects the working documents of an advertising dispute practice, on both the compliance side and the litigation side. It includes the claim intake form and substantiation file structure that prevent claims from becoming cases, the evidence log and characterization worksheet that open a challenge, a demand letter and a self-regulatory challenge outline, a preliminary injunction brief skeleton, survey specifications for building and attacking, targeted discovery requests, and settlement terms that actually prevent recurrence. Each template is annotated with its purpose, its owner, and the failure it prevents. Each template carries drafting notes on what the document is proving and to whom. Adapt everything to the claim, the medium, and the governing law.