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.
Provisional Application Toolkit: Invention Capture Templates, Written Description Audits, and Conversion Calendars
This toolkit collects the working papers that a provisional patent application runs on, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing statute, rule, or case. The early templates cover a pre-pitch disclosure policy, an invention capture interview form, an inventorship contribution map, and a short-form present assignment. The drafting templates are a specification skeleton and a written description audit worksheet that tests every feature the business may claim against the text and figures. The filing templates cover cover sheet data, entity status, and a filing receipt review log, and the conversion templates are an improvement log, a conversion and priority calendar, a month-nine decision memo, a priority map, and an inventor declaration packet. A running example follows a wearable-sensor startup through each form, and the toolkit closes with a deadline tracker and practical notes.
Trademark Licensing and Quality Control: Naked Licensing, Abandonment, and Brand Integrity
A trademark is not property in the ordinary sense; it is a promise about source and consistency, and a license that abandons control abandons the promise. This article explains why trademark licensing carries a quality control obligation that patent and copyright licensing do not, what courts actually require to satisfy it, and how a mark can be forfeited by a licensor who never intended to give anything up. It works through the leading naked licensing decisions, the three routes to establishing adequate control, and the evidence that decides the question years later. It then covers the drafting choices that matter—scope, standards, approvals, audits, sublicensing, termination, and sell-off—along with assignment in gross, licensee estoppel, the bankruptcy consequences after Mission Product Holdings, and the franchise law trap that catches ordinary trademark licenses. A running example follows one brand through a good license and a bad one.
Trademark License and Quality Control Checklist: A Practical Checklist
This checklist runs a trademark license from the pre-deal registration audit through termination, with the quality control provisions treated as the load-bearing part they are. It opens with the ownership and registration work that must precede any license, then licensee diligence, deal economics, and the scope terms that prevent the most common disputes. The central sections cover the quality control architecture, the approval process, the audit and reporting regime, and the control file that proves control years later. Separate sections handle the franchise law screen every royalty-bearing license needs, international adaptations, termination and exit mechanics, and an annual program review. A closing section gives the licensee's own checklist and a short diagnostic for a program you have inherited.
Termination Rights Toolkit: Notices, Recordation, and Successor Agreements
This toolkit collects the working documents a copyright termination actually requires, on both sides of the transaction. It provides a window computation worksheet, a family tree and majority interest worksheet, annotated notice language for Sections 203, 304(c), and 304(d), a service and recordation packet, and a takers' agreement outline. It also supplies the grantee's tools: a catalog exposure schedule, a derivative works register, a response letter that preserves defenses without conceding anything, and a regrant term sheet for the exclusive negotiation window. Each item is annotated with the drafting decision behind it and the failure it is designed to prevent. Use the worksheets before the notice and the registers before the negotiation.
SEP and FRAND Licensing Checklist: A Practical Checklist
A working checklist for standard-essential patent licensing from both sides. It opens with the implementer's exposure mapping and supply chain analysis before any demand arrives, then the three-week response that establishes willingness, the essentiality and valuation work, the counter-offer, and security. Separate sections cover the patent holder's preparation and notice obligations, forum selection and the multi-jurisdictional race, rate-setting evidence, the ITC public interest submission, patent pools, license scope terms, and arbitration. A closing section addresses the component supplier's distinct position. Every item is written so that a "no" tells you what to do next.
Section 101 Toolkit: Claim Drafting, Motions to Dismiss, and Expert Support
Working templates for patent eligibility practice on both sides and at the Patent Office. It includes a screening memorandum, a specification-admissions extraction worksheet, a representative-claim chart, a motion to dismiss outline with drafting notes, an opposition outline, eligibility allegations for a complaint, a conventionality declaration outline, a response to a Section 101 rejection, a specification drafting guide with a functional-to-mechanism conversion table, an allowance memorandum, a portfolio assessment worksheet, and a pre-suit letter. Each carries notes on what courts actually credit and where each side most often fails. A quick-reference table sets out who decides each question and under what standard. Adapt every template to the patent, the record, and the district's practice.
Running an ANDA Litigation: A Practical Guide
A step-by-step guide to prosecuting and defending a Hatch-Waxman case, written for counsel on both sides and for the regulatory and business teams that make the underlying decisions. It runs from the generic's pre-filing analysis and notice letter through the brand's 45-day sprint, the confidential access process, scheduling against the 30-month stay, discovery centered on the ANDA, claim construction, the bench trial, and the settlement and launch decisions. Separate parts cover the skinny-label carve-out and induced infringement, the PTAB track and its estoppel cost, at-risk launch analysis, and the antitrust review every settlement receives. It includes a worked case with named parties, budgets, a realistic calendar, and the mistakes that recur.
Publishing, Merchandising, and Character Licensing: Advances, Royalties, Approvals, and the Long Tail
Publishing and merchandising agreements are grants of copyright dressed as commercial contracts, and the money turns on how the grant is drafted rather than on the royalty rate. This article explains the grant of rights and the recurring failure of technology-neutral drafting, illustrated by the electronic rights cases that decided who owned formats nobody contemplated. It covers advances, the royalty base, the reserve against returns, and the audit rights that make royalty reporting meaningful. It then turns to character licensing, where the character itself may be protectable, and to merchandising, where approval rights and quality control are the licensor's whole protection. It closes with the statutory termination right that lets an author reclaim a grant decades later, which no contract can waive.
Publishing and Merchandising Agreement Checklist
Publishing and merchandising agreements are long, and the provisions that determine the outcome are a short list. This checklist runs the ownership diligence that must precede any grant, then the grant and reservation where most of the value sits. It covers the royalty base and its deductions, the reserve against returns, acceptance and delivery, reversion, and the audit right that makes reporting meaningful. Separate sections cover the merchandising structure—minimum guarantee against minimum performance, the approval architecture, and the quality control programme that also preserves the trademark—and the termination and sell-off mechanics. It closes with programme administration and the calendar entries that must be made at signature.
PTAB Toolkit: Petitions, Patent Owner Responses, and Motions to Amend
Working templates for PTAB practice on both sides. It includes a decision memorandum, a real party in interest worksheet, a prior art development log separating estopped from non-estopped grounds, a petition outline with claim chart and motivation-to-combine formats, stipulation language in narrow and broad forms, a stay motion outline, a preliminary response outline, a cross-examination plan, a motion to amend worksheet with an intervening rights model, a dual-track consistency log, an oral hearing preparation sheet, and settlement provisions addressing termination. Each carries drafting notes on what the Board credits and where each side most often fails. A closing table collects the governing standards and the authority for each. Adapt every template to the patent, the art, and the current state of Board practice.
PTAB Post-Grant Checklist: A Practical Checklist
A working checklist for PTAB post-grant practice from both sides. It opens with the petitioner's decision framework—what the invalidity case is made of, what estoppel would cost, and whether the Board can decide the issues that matter—then walks the real party in interest analysis, prior art development, petition drafting for all-or-nothing institution, the stipulation, and the stay motion. Later sections cover the patent owner's preliminary response and post-institution strategy, the motion to amend and its intervening rights cost, discovery, the oral hearing, appeal, and the coordination discipline dual-track practice requires. A closing section compares the alternative post-grant vehicles. Every item is written so that a "no" tells you what to do next.
Prosecuting and Defending a Section 101 Challenge: A Practical Guide
A step-by-step guide to raising and defeating a patent eligibility challenge, written for counsel on both sides and for prosecutors whose drafting choices decide the outcome years later. It covers the two-week screen, reading the specification for admissions, choosing the vehicle and the timing, briefing the representative claim and the claim construction question, building or defeating a Berkheimer factual dispute, and what to do at the Patent Office when an examiner rejects under Section 101. Separate parts address the patentee's pleading strategy, portfolio and case-selection decisions, appeal, and fee exposure. It includes worked motions with named parties, budgets, timelines, and the mistakes that decide these motions.