Intellectual Property Insights

Analysis and practical guides on intellectual property.

265 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.

Intellectual PropertyTrademark

Filing a UDRP Domain Name Complaint: A Practical Checklist

The Uniform Domain-Name Dispute-Resolution Policy is a fast, low-cost administrative route for recovering a domain name from a cybersquatter. This checklist walks a trademark owner and its counsel through the entire process: confirming the case is a clean fit, gathering and dating evidence by element, choosing a provider, drafting a complaint that proves all three required elements, handling the mutual-jurisdiction statement and registrar lock, and managing the post-decision transfer window. It explains the three cumulative elements—identical or confusingly similar, no rights or legitimate interests, and bad-faith registration and use—and flags reverse-domain-name-hijacking risk and when ACPA litigation is the better tool. WHY notes and traps accompany each phase. Verify current provider fees and rules before filing.

Casey Scott McKayOctober 5, 20258 min read

Intellectual PropertyTrade Secret

Trade Secret Cybersecurity Incident Response Checklist: A Practical Checklist

When a breach hits, the incident-response machine almost always points itself at personal data and the notification clock, while the theft of trade secrets — often far more financially devastating — goes unrecognized until the window for protective action has closed. This checklist folds intellectual property protection into incident response across three time horizons. Before the breach: a current crown-jewels inventory and the right contractual notices. During the breach: a triage question that flags an IP incident, parallel containment and preservation, forensic documentation built to litigation rather than regulatory standards, and a privilege structure that avoids the trap that snared Capital One. After the breach: preserving trade secret status through prompt visible action, pursuing or documenting DTSA remedies, coordinating notifications to manage the disclosure paradox, and protecting whatever insurance coverage exists. Each step is paired with the reason it matters and the case law that makes the stakes concrete.

Casey Scott McKaySeptember 25, 20259 min read

Intellectual PropertyTrademark

Trademark Statement of Use Checklist: A Practical Checklist

A checklist for completing an intent-to-use trademark application by filing a Statement of Use after the Notice of Allowance, including the timeline math for extensions of time. It covers when to file an SOU versus an Amendment to Allege Use, the per-class requirements (fee, specimen, dates of first use, verified declaration), the six-month extension cadence capped at 36 months from the Notice of Allowance, the request-to-divide option when use is partial, and how all of it preserves the constructive-use priority that dates back to the application filing date under 15 U.S.C. 1057(c). WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice.

Casey Scott McKaySeptember 22, 20258 min read

Intellectual PropertyPatent

The Evolution of Design Patent Functionality: Clarifying the Muddle

Functionality in design patent law is two doctrines wearing one name, and confusing them is the source of most of the "muddle." The first is a validity rule: under 35 U.S.C. § 171 a design is unprotectable only if its appearance, judged for the article as a whole, is "dictated solely by function." The second is a claim-construction and infringement question: how individual functional features within a valid design affect the scope of what the patent covers. This article traces the doctrine from the early "dictated by function" test through the modern multi-factor inquiry of Berry Sterling and PHG Technologies, and through the Federal Circuit's course correction in Ethicon Endo-Surgery v. Covidien and Sport Dimension v. Coleman away from "factoring out" functional elements. It examines Automotive Body Parts Ass'n v. Ford and the rejection of an "aesthetic functionality" defense, connects functionality to the "article of manufacture" damages question of Samsung v. Apple, situates the doctrine after the en banc LKQ decision on obviousness, and offers worked examples plus prosecution and litigation guidance.

Casey Scott McKaySeptember 22, 202543 min read

Intellectual PropertyTrademark

How to File a UDRP Complaint for Domain Name Disputes

A complete, practitioner-grade guide to recovering a domain name from a cybersquatter through the Uniform Domain-Name Dispute-Resolution Policy. It walks through the three required elements—identical or confusingly similar, no rights or legitimate interests, and bad-faith registration and use—anchored in the WIPO Overview 3.0 and leading panel decisions such as Telstra. It explains provider selection (WIPO, FORUM, and the other ICANN-accredited centers), complaint drafting under the UDRP Rules, the registrar lock, mutual-jurisdiction statements, GDPR-redacted WHOIS, the respondent's defenses, and reverse domain name hijacking. A dedicated section contrasts the UDRP with federal litigation under the ACPA, 15 U.S.C. § 1125(d), including its nine bad-faith factors, statutory damages, and in rem jurisdiction. Written for trademark owners recovering domains and the attorneys who represent them. Not legal advice.

Casey Scott McKaySeptember 20, 202537 min read

Intellectual PropertyPatent Litigation

Do You Have to Enforce Your Patent? Duty, Demand Letters, and the Cost of Doing Nothing

A patent owner has no legal duty to enforce a patent, and no duty to file suit after sending a cease and desist letter — unlike a trademark, a patent does not weaken, narrow, or lapse because infringement is tolerated. Never suing does not affect validity, but it steadily erodes the remedy: the six-year damages window under § 286 closes year by year, injunctive relief becomes harder under eBay, and licensing leverage drops. The genuine danger is the specific pattern of threatening and then going quiet, which supplies both elements of an equitable estoppel defense and can bar the entire claim, past and future, as it did in Aspex Eyewear after three years of silence and Radio Systems v. Lalor after four and a half. Meanwhile the letter itself hands the recipient a declaratory judgment vehicle, an unstarted IPR clock, and exposure under the bad-faith assertion statutes now on the books in 34 states. The practical rule: decide whether to litigate before you send the letter, and if you are not ready to file, preserve the position with a tolling agreement or documented follow-up rather than silence.

Casey Scott McKaySeptember 12, 202546 min read

Intellectual PropertyPatent

Freedom-to-Operate Search: A Practical Checklist

A company that launches a product reading on a valid, in-force patent risks injunctions, ruinous damages, and trebled awards for willful infringement. This checklist walks the entire freedom-to-operate (FTO) workflow before launch: defining exactly what you are clearing, searching the patent landscape across USPTO, Espacenet, PATENTSCOPE, and commercial databases, triaging hundreds of hits down to the dangerous few, reading and construing claims, building claim charts, assessing literal infringement and the doctrine of equivalents, evaluating validity defenses, confirming term and status, weighing an opinion of counsel against willfulness exposure after Halo and § 298, and choosing among design-arounds, licensing, and IPR. It distinguishes FTO from patentability, flags the all-elements rule and prosecution-history estoppel, and explains why documentation is the evidentiary backbone of a good-faith story. Use it to bring a product to market with informed—if never absolute—confidence.

Casey Scott McKaySeptember 5, 202511 min read

Intellectual PropertyTrade Secret

Drafting a Nondisclosure Agreement Checklist: A Practical Checklist

Non-disclosure agreements are the most common contract in commercial life and among the most carelessly drafted. This checklist walks a drafter through every load-bearing provision of an enforceable NDA: choosing mutual versus one-way structure, defining confidential information through a layered marking mechanism, pairing a non-use covenant with the non-disclosure covenant, stating the standard exclusions, scoping permitted uses, setting term and survival with perpetual protection for trade secrets, including the easily-forgotten DTSA Section 1833(b) whistleblower-immunity notice (18 U.S.C. § 1833(b)), and handling compelled disclosure, return of materials, remedies, choice of law, and the technology-specific problems of residual knowledge and reverse engineering. Each item is paired with the reason it matters and the drafting trap it avoids, drawn from the case law that decides NDA disputes. The goal is an agreement that protects what matters rather than merely appearing to.

Casey Scott McKaySeptember 4, 20259 min read

Intellectual PropertyTrademark

The Intricate World of Trade Dress Protection: Balancing Brand Identity and Functional Design

Trade dress protects the total look and feel of a product or business—its packaging, configuration, color, décor, and overall image—when those features identify a commercial source. This practical primer explains what trade dress is, walks through the three elements of a claim (distinctiveness, non-functionality, and likelihood of confusion), and clarifies the pivotal rule of Wal-Mart Stores, Inc. v. Samara Bros. that product-design trade dress can never be inherently distinctive and always requires secondary meaning. It examines the utilitarian and aesthetic functionality doctrines under Inwood, Qualitex, and TrafFix; the Morton-Norwich proof factors; and the mechanics of registering trade dress on the Principal Register at the USPTO. It also covers enforcement, dilution, defenses, and remedies, and works through the practical strategy a brand owner should follow from product launch to litigation. Famous examples—the Coca-Cola contour bottle, the Hermès Birkin bag, the Apple store layout, and the Louboutin red sole—and the Supreme Court's 2023 Jack Daniel's decision illustrate how the doctrine plays out in the real world.

Casey Scott McKayAugust 26, 202548 min read

Intellectual PropertyCopyright

Filing a DMCA Takedown Notice: A Practical Checklist

The DMCA notice-and-takedown system is the fast lane of online copyright enforcement: a substantially compliant notice obliges a hosting provider to remove infringing material to keep its safe harbor. This checklist walks a copyright owner or agent through preparing and sending an effective takedown notice, identifying the designated agent, satisfying the six statutory elements of Section 512(c)(3)(A), considering fair use before signing as Lenz requires, scoping the request proportionately, and anticipating a counter-notice. It flags the deficiencies that let providers ignore a notice and the Section 512(f) liability that follows a knowing misrepresentation. It also explains why registering the work early strengthens your hand if the dispute escalates. Confirm current platform procedures before relying on any step.

Casey Scott McKayAugust 22, 20257 min read

Intellectual PropertyPatent

Preparing an Invention Disclosure: A Practical Checklist

An invention disclosure is the raw material from which a patent application is built, and its quality sets the ceiling on the protection an inventor can ever obtain. This checklist walks an inventor or R&D team, step by step, through gathering exactly what patent counsel needs: a precise problem statement, the mechanism (not just the result), alternative embodiments you did not build, the prior art you know of, the dates and records that anchor conception, and the contributor roles that determine inventorship. It flags the timing bars under 35 U.S.C. § 102 (including Helsinn's secret-sale rule), the duty of candor under 37 C.F.R. § 1.56, and the § 112 written-description and enablement demands that the disclosure must ultimately satisfy. Use it to produce a disclosure that lets counsel claim the full scope of the invention and survive both examination and later challenge.

Casey Scott McKayAugust 18, 202512 min read

Intellectual PropertyPatent

Inequitable Conduct in Patent Prosecution: Navigating the Atomic Bomb of Patent Law

Inequitable conduct is the defense that can render an entire patent permanently unenforceable when an applicant breaches the duty of candor owed to the U.S. Patent and Trademark Office. This article explains the duty of candor under 37 C.F.R. 1.56, the watershed en banc decision in Therasense v. Becton, Dickinson and its demanding but-for materiality and specific-intent framework, and the narrow egregious-misconduct exception that survives it. It traces the doctrine from the Supreme Court unclean-hands cases through Kingsdown, Regeneron v. Merus, and the danger of infectious unenforceability across patent families. It explains the Information Disclosure Statement as the practical heart of compliance, supplemental examination under 35 U.S.C. 257 as a curative tool, and how Rule 9(b) pleading under Exergen gates these claims in litigation. It closes with a step-by-step compliance program. Throughout, plain-language explanations and worked hypotheticals make the doctrine accessible to inventors, business owners, and lawyers alike.

Casey Scott McKayAugust 14, 202545 min read