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.
Section 337 Investigations at the ITC: Exclusion Orders, Domestic Industry, and Speed
The International Trade Commission is the fastest and in some ways the most powerful patent forum in the United States, and it is available only to those who can prove a domestic industry. This article explains what a Section 337 investigation is, how it differs from district court litigation in remedy, pace, and procedure, and why the domestic industry requirement is the gate that decides who may use it. It covers the phases of an investigation from complaint through Commission determination and presidential review, the difference between limited and general exclusion orders, and how Customs actually enforces them at the border. It also addresses the strategic reality that most Section 337 complainants also sue in district court, and how the two proceedings interact.
Patent Damages Toolkit: Royalty Models, Expert Reports, and Daubert Motions
This toolkit collects the working documents that a damages case actually runs on, from the pre-filing marking audit through the post-trial ongoing royalty briefing. Each template is annotated with its purpose, its owner, and the specific failure it prevents. The materials cover both sides—a marking audit worksheet serves the patentee proving compliance and the defendant attacking it, and the expert report outline doubles as a review protocol for the opposing report. They are structures rather than forms, intended to impose the discipline that keeps damages opinions admissible and damages verdicts affirmable.
Patent Damages Checklist: A Practical Checklist
Patent damages fails in predictable places, and nearly all of them are avoidable with a checklist run at the right time. This one is organized by phase: the pre-filing audit that fixes the damages period and tests marking compliance, the discovery that must be requested in the right format, the apportionment analysis that will be tested under Rule 702, the expert report review protocol, and the post-trial motions that determine enhancement, fees, interest, and ongoing royalties. Items are written so either side can use them, with notes where the patentee's and the accused infringer's tasks diverge. Each section closes with the failure it exists to prevent.
Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice
The Trademark Modernization Act of 2020 gave businesses blocked by phantom registrations cheaper tools than a full cancellation case, and gave registrants new ways to lose registrations they never earned. This article explains how ex parte expungement (marks never used) and ex parte reexamination (marks not in use on the date use was claimed) work under 15 U.S.C. §§ 1066a and 1066b and 37 C.F.R. §§ 2.91 to 2.94, including the reasonable-investigation requirement, the filing windows, the Director's non-reviewable institution decision, the registrant's response options, estoppel, and appeals to the TTAB and the Federal Circuit. It walks through the TTAB's leading decisions under the new procedures, the new Section 14(6) nonuse cancellation ground, and how each tool compares with abandonment and fraud claims after In re Bose. It also covers letters of protest, shortened office-action response periods, the post-registration audit program, and the restored presumption of irreparable harm in 15 U.S.C. § 1116(a). A worked example follows a startup whose application is blocked by a 2016 registration supported by a doctored specimen, and the article closes with strategy for both sides, common mistakes, an FAQ, and practical takeaways.
Proving and Attacking Patent Damages: A Practical Guide
Patent damages is built, not argued: the number a jury returns depends on data collected months earlier and on methodological choices that cannot be revisited after reports are served. This guide walks through the work in sequence for both sides—the pre-filing valuation, the discovery that must be requested and produced, the selection and management of a damages expert, the apportionment analysis that will be tested under Rule 702, and the deposition and motion practice that decides whether an opinion reaches the jury. It includes a working calendar, a division of labor, a list of the errors that most often produce exclusion, and a framework for valuing the case at each stage so settlement decisions rest on something better than instinct. Worked examples show how a royalty base is narrowed and how an expert survives or fails a Daubert challenge. Written for counsel on either side of the damages case and for in-house lawyers pricing the exposure.
Trademark Consumer Survey Design: A Practical Checklist
A consumer survey is a scientific instrument, and in a trademark case it is only as good as its methodology. This checklist guides counsel and survey experts through designing a defensible confusion survey from the first decision to the final report: defining the correct universe for the theory of confusion, choosing the Eveready or Squirt format, drafting neutral screeners and questions, building a proper control to net out noise, administering double-blind under marketplace-realistic conditions, sizing the sample, coding objectively, and building the survey to survive a Daubert challenge under Rule 702. It also maps secondary-meaning, fame, and genericness (Teflon and Thermos) formats. WHY notes and traps accompany each phase. Survey design is fact-specific; consult a qualified survey expert and counsel.
Patent Damages: Reasonable Royalties, Lost Profits, Apportionment, and Enhancement
A patent is worth what a court will make an infringer pay for using it, which makes damages law the place where patent value is actually determined. This article explains the two paths to recovery under the damages statute—lost profits and reasonable royalty—and the doctrines that discipline each. It covers the Panduit framework for lost profits, the hypothetical negotiation and Georgia-Pacific factors that structure royalty analysis, and the apportionment rules that have reshaped royalty practice over the past fifteen years. It also addresses the limits that cut recovery independent of the merits: the marking requirement, the six-year damages window, and the gatekeeping courts apply to damages experts. It closes with enhancement for willfulness, exceptional-case fees, and the practical question of what a damages case is worth before it is filed.
Claim Construction Toolkit: Charts, Briefs, Expert Declarations, and Hearing Materials
This toolkit collects the working documents a team actually produces during a claim construction phase, from the first intrinsic evidence index through the stipulated judgment that sets up an appeal. Each template is annotated with what it is for, who should own it, and the mistakes it is designed to prevent. The materials are deliberately generic as to technology so they can be adapted to mechanical, electrical, chemical, and software cases alike. They assume a district with local patent rules but note where practice varies. Use them as starting structures rather than forms; the value is in the discipline they impose, not the words.
Claim Construction Checklist: A Practical Checklist
Claim construction rewards discipline more than brilliance, and most losses in the phase trace to a step that was skipped rather than an argument that was wrong. This checklist covers the full sequence: assembling the intrinsic evidence file, defining the person of ordinary skill, screening candidate terms for dispositive value, stress-testing every proposed construction against the prior art, preparing declarations and tutorials, and preserving the record for appeal. It is organized by phase so a team can work through it in order and use it as a status document. Each section ends with the specific failures that most often surface at the hearing.
Running a Clean Room Software Development Project: A Practical Guide
This guide explains, step by step, how to plan, staff, run, and document a clean-room software development project so that the resulting product can be defended against copyright, trade secret, and contract claims. It begins with the threshold decisions: whether a clean room is needed at all, what the compatibility objective is, and how the information about the target will be lawfully obtained. The core steps cover legal review of the target, license and terms-of-service restrictions, team selection and certification, physical and technical separation, the dirty team's investigation, writing a functional specification, gatekeeper review, clean-team implementation and questions, an AI coding tools policy, testing without contamination, records and privilege design, and closing the project. A timeline and cost-driver table, an extended worked example involving a robotics company building a compatible motion-controller driver, guidance for the interface owner evaluating a competitor's clean room, common mistakes, an FAQ, and takeaways close the guide.
Preparing for a Markman Hearing: A Practical Guide
A Markman hearing is the closest thing patent litigation has to a decisive battle, and it rewards preparation that begins months before the hearing date. This guide walks through the entire sequence in operational terms: building the intrinsic evidence file, defining the person of ordinary skill, selecting which terms to fight over, drafting constructions that survive contact with a judge, preparing expert declarations that add value rather than noise, building a technology tutorial, and arguing the hearing itself. It includes a working calendar, a division of labor for the team, and a set of mistakes that experienced practitioners see repeatedly. It ends with what to do in the first two weeks after the order issues, when the strategic options are widest and the clock is shortest.
Copyright Renewal and Termination Checklist: A Practical Checklist
For most of the twentieth century U.S. copyright ran on a two-term system, and a separate, non-waivable right lets authors and their heirs terminate old transfers and recapture rights decades later. This checklist serves two related tasks: determining whether a pre-1978 work is still protected or in the public domain (the renewal analysis) and exercising or preserving the termination-of-transfer rights under Sections 203 and 304. It walks through filing a renewal registration on Form RE, the automatic-renewal rule for 1964 to 1977 works, the foreign-restoration asterisk, identifying who holds the termination interest and the strict notice windows, and the derivative-works exception. Because deadlines here are unforgiving, treat this as an orientation and engage specialized counsel.