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.
Patent Licensing Toolkit: Grant Clauses, Royalty Structures, and Exhaustion Analyses
This toolkit provides the drafting language and analytical frameworks that decide the outcome of a patent licence. It opens with a grant clause built as a limitation rather than a covenant, with the field, territory, have-made, and sublicensing provisions that follow from it—including the sublicence survival language that protects a business built beneath a head licence. Royalty materials include a net sales definition with an exhaustive deduction list, a Brulotte-compliant step-down schedule, stacking relief, and a most-favoured-licensee clause that will not detonate later. An audit clause with cost shifting, a marking and verification provision, an improvements framework with a bounded grant-back, and enforcement and joinder language follow. The toolkit closes with an exhaustion analysis worksheet, a covenant-not-to-sue drafting note, and a one-page licence summary template for the people who will actually operate under the agreement.
Patent Licensing and Exhaustion: Field-of-Use Limits, Covenants Not to Sue, and What the First Sale Ends
Patent exhaustion is the doctrine that decides where a patent owner's control over a particular article stops, and after 2017 the answer is blunter than most licensing programmes assume. An authorized sale exhausts the patent rights in the article sold, wherever in the world the sale occurs, and restrictions the seller imposed as a condition of that sale do not survive as patent rights even when they survive as contract rights. This article traces the doctrine from the nineteenth-century cases through Quanta and Impression Products, explains why a field-of-use limitation on a licensee behaves differently from a restriction on a purchaser, and shows what a covenant not to sue actually accomplishes. It examines the drafting choices that preserve a licensor's position—grant scope, have-made rights, sublicensing, and the tiered royalty structures that replace lost downstream control—and the ones that quietly destroy it. It also addresses post-expiration royalties under the Brulotte rule, the licensee's ability to challenge validity, and misuse. Worked examples run through a component supplier, a printer cartridge programme, and a medical device sold under a single-use label.
Patent License Negotiation Checklist
This checklist runs a patent licence negotiation from diligence through signature and into administration. It begins with the ownership and encumbrance verification that determines whether the licensor can grant what it is offering, then the freedom-to-operate work that determines whether the licence is worth taking. The grant section covers the enumerated rights, the field as a limitation rather than a covenant, have-made rights, and sublicensing survival. Money sections address the base, deductions, structure, minimums, milestones, step-downs, and stacking, followed by the reporting and audit provisions that make royalties collectable. Later sections cover improvements, enforcement and standing, representations and indemnity, termination and survival, and the marking obligation that quietly determines recoverable damages. It closes with an exhaustion analysis both parties should run before signing and a post-signature administration list.
Patent Eligibility Under Section 101: The Alice/Mayo Framework and How Courts Apply It
Section 101 is fifty-two words long and it decides more patent cases at the pleading stage than any other provision. This article explains the two-step Alice/Mayo framework, what the Supreme Court actually held in Bilski, Mayo, Myriad, and Alice, and why the same claim can be ineligible in one court and survive in another. It covers the judicial exceptions and their rationale, how step one identifies what a claim is "directed to," what counts as an inventive concept at step two, the factual questions Berkheimer put in front of the fact-finder, and why the USPTO applies a materially different framework than the courts. It closes with what the doctrine means for claim drafting, for a defendant deciding when to move, and for a patentee deciding what to assert.
Patent Eligibility Checklist: A Practical Checklist
A working checklist for patent eligibility, usable by a defendant screening asserted patents, a patentee deciding what to assert, and a prosecutor drafting claims that will survive. It opens with the two-hour screen and the specification read that decides most motions, then works through the step-one characterization, the step-two inventive-concept analysis, the representative-claim and claim-construction questions, and the Berkheimer factual dispute. Separate sections cover the patentee's pleading, the Patent Office framework and how it differs, life sciences claims, drafting rules, and the coordination with Section 103 and PTAB positions. Every item is written so that a "no" tells you what to do next.
Paragraph IV and ANDA Litigation Checklist: A Practical Checklist
A working checklist for Hatch-Waxman practice from both sides. It opens with the generic's pre-filing landscape work, certification decisions, and notice letter, then walks the brand's 45-day sprint from receipt of notice to filing suit within the window that produces the 30-month stay. Later sections cover scheduling against the stay, discovery centered on the ANDA, claim construction, the bench trial, the skinny-label scrub and the induced infringement record, the PTAB decision and its estoppel cost, at-risk launch analysis, and settlement structuring under the antitrust framework. Every item is written so that a "no" tells you what to do next.
Negotiating and Litigating a FRAND License: A Practical Guide
A step-by-step guide to a standard-essential patent negotiation and the litigation that may follow, written for implementers, patent holders, and the in-house teams that own the relationship. It covers the implementer's exposure mapping and supply chain analysis before any letter arrives, the response that establishes willingness, the essentiality and valuation work, the counter-offer, security, and the forum decisions that follow. Separate parts address the patent holder's preparation and notice obligations, rate-setting litigation and its evidence, the ITC and multi-jurisdictional strategy, and settlement structure. It includes a worked negotiation with named parties, budgets, a timeline, and the mistakes that decide leverage.
Negotiating a Publishing or Merchandising License: A Practical Guide
The value in a publishing or merchandising negotiation sits in a small number of provisions, and the royalty rate is not among the top five. This guide sets out the order in which to negotiate: what to grant and what to reserve, the royalty base and its deductions, the reserve against returns, acceptance and delivery, and the audit right that makes reporting meaningful. For merchandising it covers the minimum guarantee against minimum performance, the approval architecture, the quality control program that also preserves the trademark, and the sell-off. It then covers running the programme after signature—royalty review, approval administration, and enforcement—and closes with the diligence a licensee should do before taking any grant.
Negotiating a Patent License: A Practical Guide
A patent licence is a short document that carries the whole economics of a technology relationship, and the negotiation rewards preparation far more than eloquence. This guide walks through the sequence that produces a durable agreement: understanding what is being licensed and why, running the diligence that tells you whether the patents are worth what is being asked, and structuring the grant so that it matches the business. It then works through the money—royalty base, rate, minimums, milestones, and the audit that makes reporting meaningful—and through the clauses that decide what happens when the relationship changes: improvements, enforcement, standing, assignment, and termination. Separate sections address the licensee's leverage, the licensor's protections, and the traps that recur in every negotiation. Worked examples follow a university licence, a cross-licence between competitors, and a settlement licence negotiated under a trial date.
Negotiating a Joint Development Agreement: A Practical Guide
A joint development agreement is negotiated before anyone knows what will be invented, which is why the allocation decisions have to be made structurally rather than item by item. This guide runs the negotiation in sequence: the pre-term-sheet conversation with the technical leads that determines the allocation, the assignment chain diligence that must precede any commitment, the field definitions that carry the whole structure, and the background IP work that determines whether either party can practice the result. It then covers the commercial terms, the governance that manages inventorship during the project, and the survival provisions. It closes with the counterparty-specific issues—universities, customers, competitors, and startups—that change the negotiation materially.
Navigating the BPCIA Patent Dance: A Practical Guide
A step-by-step operational guide to the BPCIA information exchange and the litigation that follows, written for counsel on both sides and for the regulatory and manufacturing teams whose decisions drive it. It covers the applicant's pre-filing patent landscape and process design, the decision whether to dance and how to quantify the trade secret exposure, each step of the exchange with its deadlines, the negotiation over which patents get litigated, the immediate action, the 180-day notice, and the preliminary injunction that replaces the automatic stay. Separate parts address confidentiality, interchangeability strategy, at-risk launch analysis, and settlement. It includes a worked sequence with named parties, budgets, and a day-count calendar.
Joint Development Agreements and Co-Owned Intellectual Property: Who Owns What When Two Companies Build Together
Two companies decide to build something together, and the question of who owns the result is usually answered badly or not at all. This article explains why co-ownership of a patent is the worst available outcome—each owner may practice and license without accounting to the other, and neither can sue without joining the other—and why that default drives almost every drafting decision in a joint development agreement. It covers joint inventorship and how it arises, the assignment mechanics that determine whether a company actually owns what its employees invent, the allocation structures that work better than co-ownership, and the different rules for copyright and trade secrets. Worked examples follow a co-development from term sheet through a dispute over an improvement neither party expected.