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.
Choosing or Challenging Venue in a Patent Case: A Practical Guide
This guide takes both sides of a patent venue dispute through the decisions in the order they arrive. A patent owner learns how to map a defendant's entities and physical footprint from public sources, compare forums, stress-test the choice against a transfer motion, and plead venue with facts. An accused infringer learns what to do in the first days after service, how to audit employees, equipment, and servers, how to preserve the objection, and how to choose among Rule 12(b)(3), section 1406, and section 1404. It covers venue discovery from both perspectives, transfer evidence factor by factor, and when mandamus is realistic. Sample language, two worked scenarios, trade-offs, and a list of common mistakes are included.
Patent Post-Grant Proceedings: IPR, PGR, and Reexamination at the PTAB
Since 2012, the cheapest and fastest way to kill a United States patent has not been a district court trial. It has been an inter partes review at the Patent Trial and Appeal Board, where a panel of technically trained administrative judges applies a preponderance standard, no presumption of validity attaches, and a final written decision issues within twelve months of institution. This article explains the full menu of post-grant options, inter partes review, post-grant review, ex parte reexamination, supplemental examination, and reissue, and shows how to choose among them. It covers eligibility windows, the one-year time bar of section 315(b) and how service of a complaint starts it, real-party-in-interest and privity traps, the discretionary denial doctrines built on Fintiv, General Plastic, and section 325(d), the mechanics of institution and trial, motions to amend after Aqua Products, and the estoppel that attaches under section 315(e) after California Institute of Technology v. Broadcom. It also addresses the parallel district court case: when to move for a stay, how the two proceedings interact, and what the different burdens of proof mean in practice. It closes with strategy for petitioners and patent owners, a worked example, an FAQ, and related reading.
Producing a Film or Series: Rights, Talent, and Distribution Agreements
Producing a film or series is a rights assembly problem wrapped in a financing problem. Every element that appears on screen—the story, the script, the performances, the music, the locations, the artwork on a wall, a trademark on a coffee cup—must be licensed or cleared, and the resulting bundle must be documented well enough that a distributor's lawyer and an insurer will accept it. This guide follows the production chronologically: acquiring underlying rights and building chain of title, engaging writers and talent under guild and non-guild agreements, financing and the entity structure that supports it, the clearances that must be completed before delivery, and the distribution and sales agreements that determine whether anyone is paid. It closes with delivery, residuals, and the obligations that survive the production.
Serving Legal Documents to Chinese Defendants in IP Litigation: A Practitioner's Guide
For U.S. companies pursuing intellectual property claims against Chinese sellers, manufacturers, and counterfeiters, service of process is not a clerical formality—it is the load-bearing wall on which every downstream remedy rests. This guide is the IP-litigation companion to our general service overview, and it concentrates on the tools that make or break a cross-border IP case: the "Schedule A" counterfeiting playbook, court-ordered email service under Rule 4(f)(3), and the ex parte machinery—TROs, asset freezes under Rule 65, DTSA civil seizure under 18 U.S.C. 1836(b)(2), and anti-suit injunctions—that lets a rights holder strike before a Chinese defendant can move money or evidence offshore. We walk through the mandatory Hague Convention framework, the deep judicial split over emailing Chinese defendants, the landmark Schlunk, Water Splash, Rockefeller, and Luxottica decisions, and China's 2024 Civil Procedure Law. The throughline is a single hard question: how do you get sued papers in front of a defendant in Shenzhen, freeze the assets that matter, and build a judgment that survives challenge at home and abroad.
Intellectual Property Considerations and Protectable Content in Mobile Apps
A mobile app is not one thing you protect; it is a stack of separable assets, each governed by a different body of intellectual property law. This guide maps every protectable layer of an app—source and object code, the API question after Google v. Oracle, the user interface and "look and feel," graphics and sound, the app name and icon, novel functionality and algorithms, databases, trade secrets, and third-party and open-source components—and explains which legal tool fits each. It walks through the practical ownership traps (work made for hire versus contractor assignment), the post-Alice reality of software patents, design patents for graphical interfaces after Samsung v. Apple, and the constraints app-store developer agreements impose. Worked examples using a fictional app, "Larkspur," make the abstractions concrete. The aim is a clear-eyed inventory you can use to decide what is worth protecting, how, and in what order.
Trade Secret Audit Checklist: A Practical Checklist
A trade secret audit is the systematic exercise of finding, classifying, and verifying the protection of an organization's confidential information. This checklist guides counsel and security teams through scoping the audit, inventorying the crown jewels, mapping where each secret lives and who can reach it, verifying the physical, technical, administrative, and contractual measures protecting each item, scoring the program against a maturity model, and remediating the gaps. It explains why a current, honest audit is both a security exercise and the contemporaneous evidence of "reasonable measures" the Defend Trade Secrets Act (18 U.S.C. § 1839(3)) demands, and why it is the document that lets a plaintiff identify its secrets "with reasonable particularity" without losing them. The audit is the heartbeat of a living protection program and a recurring requirement before any financing, acquisition, or shift to remote work.
Trademarking Your Own Name
Can you turn your own name into a registered trademark? Often yes, but the Lanham Act puts two big speed bumps in the road. The first is the "primarily merely a surname" bar of Section 2(e)(4), which the USPTO applies through the five-factor Benthin test and which usually forces you to prove acquired distinctiveness (secondary meaning) under Section 2(f). The second is Section 2(c), which blocks registration of a living person's name without written consent and which the Supreme Court upheld in Vidal v. Elster. This article walks through both rules in plain English, with real cases from In re Benthin and In re Beds & Bars to McDonald's, Ford, Kim Kardashian, and Michael Jordan. It explains how a name trademark differs from the right of publicity, what to do if someone else grabs your name first, and how to build a name into a protectable brand. It closes with a practical roadmap, a detailed FAQ, and a map of related mclaw.io guides.
Provisional Patent Applications: What They Protect, What They Do Not, and How to Keep the Priority Date
A provisional patent application buys a filing date, a year of confidential time, and the right to say "patent pending," but only for what it actually describes. This article explains what Congress created in 1994, what the statute requires and leaves out, and why the America Invents Act made the filing date far more valuable than it used to be. It walks through the cases in which priority failed, from New Railhead v. Vermeer to Dynamic Drinkware v. National Graphics, and explains the written description and enablement tests that decide every priority dispute. It separates the common myths from the law, maps the open questions (including the effect of provisionals as prior art under the AIA and foreign "same invention" tests), and sets out what inventors, investors, challengers, and counsel should do differently. An extended worked example follows a hardware startup from a pitch-deck provisional to a priority fight, and the article closes with common mistakes, an FAQ, and takeaways.
Maintaining the Duty of Candor to Avoid Inequitable Conduct: A Practical Checklist
Inequitable conduct is the defense that can render an entire patent—and related patents in the same family—permanently unenforceable when an applicant breaches the duty of candor owed to the USPTO under 37 C.F.R. § 1.56. This checklist translates the doctrine into a repeatable compliance program: educating everyone who owes the duty, gathering and cross-routing material information across a patent family, drafting candor-compliant specifications and declarations, filing timely and complete Information Disclosure Statements under 37 C.F.R. §§ 1.97–1.98, correcting errors expressly, and curing post-grant problems through supplemental examination under 35 U.S.C. § 257. It frames the controlling Therasense standard (but-for materiality and specific intent, each by clear and convincing evidence), the narrow egregious-misconduct exception, and the traps—prophetic examples, inconsistent agency statements, withheld related-application rejections, and burying or mistranslating foreign references—that detonate the "atomic bomb" of patent law.
Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist
A checklist for drafting a trademark cease-and-desist letter that stops infringement without triggering a declaratory-judgment suit or a public-relations backlash. It runs from clearing your own rights (priority, scope, registration status, honest likelihood-of-confusion assessment) through the strategic decision whether to send a letter at all, the section-by-section anatomy of the letter, the remedies that actually back the threats, the tone calculus, and the two great hazards: declaratory-judgment jeopardy under MedImmune and trademark bullying. WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice.
Design Patent Toolkit: A Roadmap for Protecting How a Product Looks
This toolkit is a high-level roadmap and curated research guide for protecting the ornamental appearance of a product through U.S. design patents. It walks the full life cycle—from deciding what a design patent can and cannot protect, through drawings and prosecution, to functionality and obviousness after the Federal Circuit's en banc LKQ decision, the ordinary-observer infringement test of Egyptian Goddess, and the total-profits remedy of 35 U.S.C. § 289 as construed in Samsung v. Apple. At each stage it links the firm's articles and checklists alongside primary statutes, USPTO resources, and controlling cases. It is written for product companies, in-house counsel, founders, and litigators who need to navigate the field, not for a single discrete task. Use it to orient yourself, then drill into the linked deep-dive documents. Verify all fees and deadlines at the official USPTO site before relying on them.
Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's
A trademark gives its owner control over a signal of source, not ownership of words, images, or the right to talk about the brand. This article explains the three doctrines that mark that boundary: classic descriptive fair use under 15 U.S.C. § 1115(b)(4), nominative fair use for truthful references to a mark owner and its products, and the special treatment of expressive works and parody under Rogers v. Grimaldi and the dilution exclusions in § 1125(c)(3). It walks through the leading cases from KP Permanent Make-Up and New Kids on the Block to the Supreme Court's 2023 decision in Jack Daniel's Properties v. VIP Products, which held that Rogers does not apply when the accused use functions as a source identifier for the user's own goods. It then shows how courts have applied that rule in Vans v. MSCHF, Punchbowl v. AJ Press, Hermès v. Rothschild, and the Bad Spaniels remand, and how the circuits still divide on burdens and tests for nominative use. Practical sections cover procedure, evidence, strategy for brand owners and accused users, costs, common mistakes, and worked examples involving a repair shop, a craft brewery parody, and a SaaS comparison chart, followed by an FAQ and takeaways.