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 PropertyPatents

International Patent Filing: The PCT, Paris Priority, National Phase, and Foreign Prosecution

There is no such thing as an international patent, and almost every expensive mistake in global patent practice starts with forgetting that. This article explains the machinery that actually exists: the twelve-month Paris Convention priority year, the Patent Cooperation Treaty as a deferral and information-gathering device rather than a grant, the national and regional phase where the real money is spent, and the substantive differences in foreign prosecution that decide what a portfolio is worth. It covers the foreign filing license requirement that quietly voids United States patents, the absolute novelty regimes that punish the disclosure a United States practitioner would forgive, and the drafting choices made in year one that constrain claim scope in year five. It works through the timeline with a running example and gives an honest account of cost, including the pruning decisions nobody enjoys making. It closes with the extraterritorial reach of a United States patent, which is narrower than clients assume and broader than it was.

Casey Scott McKaySeptember 5, 202629 min read

Intellectual PropertyPatents

International Patent Filing Checklist: A Practical Checklist

This checklist runs the international patent filing sequence date by date, from the disclosure that precedes the priority filing to the annuities that outlive everyone who approved them. It opens with the pre-filing disclosure audit and the foreign filing license, then covers the priority document, the priority year, the twelve-month fork between Paris and PCT routes, and the international phase. Later sections handle national phase entry and pruning, translation review as a legal step, the jurisdiction-specific deadlines that fall in the quiet years, and the annual reconciliation that keeps a portfolio alive. A closing section collects the recovery options when something has already gone wrong. Every item is written so a "no" tells you what to do next.

Casey Scott McKaySeptember 5, 20269 min read

Intellectual PropertyPatents

Inter Partes Review Strategy: Discretionary Denial, Estoppel, and the Parallel District Court Case

An inter partes review is cheaper and faster than district court invalidity litigation, and choosing one can cost you the other. This article explains the strategic architecture of PTAB practice: the one-year bar, the institution decision and the discretion the Board exercises over it, the estoppel that attaches on a final written decision, and how the parallel district court case shapes every one of those questions. It covers what SAS Institute did to partial institution, what Cuozzo and Thryv held about reviewability, the constitutional foundation Oil States settled, the appointments problem Arthrex fixed, and why motions to amend so rarely succeed. It closes with a decision framework for petitioners and a defensive playbook for patent owners.

Casey Scott McKaySeptember 5, 202628 min read

Intellectual PropertyPatents

Hatch-Waxman Toolkit: Notice Letters, Complaints, and Settlement Considerations

Working templates for Hatch-Waxman practice on both sides. It includes an Orange Book and exclusivity analysis worksheet, a certification decision matrix, a Paragraph IV notice letter with a confidential access offer, a brand 45-day tracker, an ANDA complaint outline, a protective order provision set, a section viii carve-out review and launch materials scrub, an induced infringement evidence log, an IPR estoppel analysis, an at-risk launch memorandum, a settlement term sheet, and an antitrust justification memorandum. Each carries drafting notes on what the document is doing, what the other side will do with it, and where each side most often fails. A closing table collects the clocks that govern the framework and what each runs from. Adapt every template to the product, the patents, and the applicable regulatory pathway.

Casey Scott McKaySeptember 5, 202621 min read

Intellectual PropertyPatents

Hatch-Waxman Litigation: The Orange Book, Paragraph IV Certifications, and the 30-Month Stay

The Hatch-Waxman Act built a litigation system on top of a drug approval statute, and it works by making a paper filing an act of patent infringement. This article explains how the Orange Book listing regime, the four certification options, and the 30-month stay fit together, why a generic filer sues itself into court by sending a notice letter, and what the safe harbor of Section 271(e)(1) does and does not protect. It covers the 180-day exclusivity that drives first-filer behavior, the skinny-label carve-out and the induced infringement exposure that follows it, reverse-payment settlements after FTC v. Actavis, and the counterclaim Caraco created for delisting. It closes with the strategic decisions each side makes and when.

Casey Scott McKaySeptember 5, 202628 min read

Intellectual PropertyPatents

Global Patent Portfolio Toolkit: Filing Calendars, National Phase Instructions, and Cost Models

This toolkit provides the working documents that run an international patent program, in the order the program uses them. It supplies a master filing calendar keyed to the priority date, a one-page invention disclosure form engineers will actually complete, a jurisdiction strategy template, and a national phase decision memo that presents ten-year cost rather than entry cost. It also includes an instruction letter to foreign associates that gives business context instead of "please advise," a translation review protocol, an annuity reconciliation worksheet, a portfolio review sheet with real abandonment criteria, a five-year cost model, and a docket transfer protocol for firm changes and acquisitions. Each item carries an annotation explaining the decision behind it and the failure it prevents. Adapt the templates; do not adapt the dates.

Casey Scott McKaySeptember 5, 202614 min read

Intellectual PropertyPatents

FRAND Toolkit: Declarations, License Offers, and Rate-Setting Evidence

Working templates for standard-essential patent practice on both sides. It includes a standards exposure register, a supplier licensing inquiry, an implementer willingness response, a patent holder notice letter, an essentiality analysis worksheet, a top-down valuation model, a comparable license normalization table, a supported counter-offer, an escrow and security notice, a negotiation log built for the willingness record, an ITC public interest submission outline, a license term sheet, an arbitration proposal, and a supply agreement indemnity provision. Each carries drafting notes on what a neutral will credit and where each side most often fails. Several templates are designed to be prepared months before they are needed, because the willingness record is built long before any tribunal reads it. Adapt everything to the standard, the portfolio, and the applicable SSO policy and governing law.

Casey Scott McKaySeptember 5, 202622 min read

Intellectual PropertyPatents

FRAND Commitments, Injunctions, and Rate Setting: How Standard-Essential Patents Get Priced

A FRAND commitment is a promise made to a standards body about patents that do not yet exist, to licensees who are not yet identified, at a price nobody has agreed. This article explains how that promise is enforced: what the commitment is as a matter of contract, who can enforce it, the hold-up and hold-out problem it addresses on both sides, and why injunctions against a willing licensee sit uneasily with it. It covers the two dominant valuation methodologies — comparable licenses and top-down apportionment — the royalty base dispute, the essentiality problem, and the negotiation framework courts have built around good faith. It closes with what an implementer and a patent holder each need to do, and when.

Casey Scott McKaySeptember 5, 202628 min read

Intellectual PropertyPatents

Filing or Defending an Inter Partes Review: A Practical Guide

A step-by-step guide to prosecuting and defending an inter partes review, written for counsel on both sides and for the district court team running the parallel case. It covers the petitioner's early decision framework and prior art development, the real party in interest analysis, drafting a petition that survives all-or-nothing institution, the stipulation and the stay motion, the patent owner's preliminary response and the arguments that actually defeat institution, post-institution discovery and cross-examination, the motion to amend and its intervening rights cost, the oral hearing, and appeal. It includes worked examples with named parties, budgets, a schedule, and the coordination discipline that dual-track practice requires. Separate parts address multi-defendant joint petitions and joinder practice, and the alternative post-grant vehicles. The organizing lesson is that filing early improves nearly every downstream variable.

Casey Scott McKaySeptember 5, 202629 min read

Intellectual PropertyCopyright

Exercising or Defending a Copyright Termination: A Practical Guide

A step-by-step guide to exercising and defending a copyright termination, written for authors and their families, for catalog owners, and for the counsel advising both. It covers the document reconstruction and timeline that precede everything, the work-made-for-hire threshold, computing the windows under each regime, building the family tree and establishing a majority interest, drafting and serving the notice, recordation, and the negotiation that follows. Separate parts address the grantee's defensive checklist, catalog exposure auditing, sector-specific practice in music, film, and publishing, and what to do when a window has closed. It includes a worked matter with named parties, budgets, and a calendar.

Casey Scott McKaySeptember 5, 202628 min read

Intellectual PropertyEntertainment and Media

Entertainment Licensing Toolkit: Royalty Schedules, Approval Processes, and Audit Provisions

This toolkit collects the drafting materials that decide how much money a licensing programme actually produces and whether anyone can prove it. It provides a royalty schedule with the deduction list written as an exhaustive enumeration, a reserve-against-returns provision with a cap and a liquidation timetable, and an audit clause with the cost-shifting trigger that makes audits worth running. Approval architecture is set out stage by stage with response periods and deemed outcomes, alongside the style guide contents that reduce approval volume. Merchandising provisions cover the minimum guarantee against minimum performance, quality control, and sell-off. Reversion and acceptance language is included for publishing deals, together with a programme administration framework and a signature-day calendar.

Casey Scott McKaySeptember 5, 202614 min read

Intellectual PropertyTrademarks

Drafting and Administering a Trademark License: A Practical Guide

This guide walks through building a trademark licensing program from the decision to license through termination, in the order the work actually happens. It starts with the registrations and ownership questions that must be settled before any deal, then covers licensee selection, deal economics, and the scope provisions that prevent the most common disputes. The heart of the guide is the quality control architecture — standards, approvals, sampling, inspection, and the records that prove all of it — followed by audit rights, termination, and the franchise law review every royalty-bearing license needs. Later steps address international adaptation, onboarding, the operating rhythm of administration, handling a licensee that goes wrong, and running a program-level annual review. A running example follows a growing apparel brand through its first three licenses.

Casey Scott McKaySeptember 5, 202628 min read