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.
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.
Copyright Termination Notice Checklist: A Practical Checklist
A working checklist for copyright termination from both sides. It opens with document reconstruction and the copyright facts, then the two threshold questions—work made for hire and whether the author executed the grant—followed by the window computation under each regime. Later sections cover building the family tree and confirming a majority interest, drafting the notice to the content requirements, service and the recordation condition, modeling what actually reverts, and the negotiation the regrant window creates. Separate sections give the grantee a defensive checklist and a catalog exposure audit, and address what to do when a window has closed. Every item is written so that a "no" tells you what to do next.
Copyright Termination and Reversion: Sections 203 and 304 and Taking Back a Grant
Congress gave authors an inalienable right to take back copyright grants after decades, and then buried it under a set of deadlines and exceptions that defeat most attempts to exercise it. This article explains how termination works: the two regimes of Sections 203 and 304, how to compute the windows, who owns the right when the author has died, what the notice must contain, and why recordation is a condition of effectiveness. It covers the work-made-for-hire exclusion that ends most claims before they start, the derivative works exception that lets a terminated licensee keep exploiting what it already made, and what Mills Music and Stewart v. Abend actually decided. It closes with what each side should do and when.
Co-Development Toolkit: Background IP Schedules, Ownership Allocations, and License Grants
This toolkit provides the operative provisions of a joint development agreement in drafting-ready form, annotated with the consequence each carries. It supplies a background IP schedule, a field-of-use definition with the exclusions that prevent later argument, and three alternative ownership allocation clauses. It provides the exploitation licence that determines whether either party can practise the result, a full co-ownership agreement for parties who genuinely want one, and an invention disclosure form built to establish inventorship years later. A joint IP committee charter, an expert determination clause for characterization disputes, present-assignment language for employees and secondees, and a survival and change-of-control provision complete the set.
Building and Managing a Global Patent Portfolio: A Practical Guide
This guide walks through building and running a patent portfolio that spans several countries, from inventory to pruning, in the order the work actually happens. It starts with the asset register almost nobody has, moves to the jurisdiction strategy that should govern every later decision, and then covers invention capture, filing policy and decision gates, the priority year, the PCT phase, and national phase entry. Later steps address managing foreign associates, budgeting annuities that arrive years after anyone remembers approving them, running an annual portfolio review with real pruning authority, and using the portfolio for licensing, diligence, and enforcement. A final step covers integrating an acquired portfolio and surviving a firm transition, which is where most established portfolios lose cases. Each step names who does the work, what it costs, and the specific failure it prevents.
Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights
This toolkit supplies the working documents of a brand licensing program, from the term sheet to the termination notice. It includes an annotated term sheet, model quality control and approval clauses with the drafting reasoning behind each, a product specification schedule outline, a submission and approval form, and a royalty report template designed so the numbers can actually be checked. It also provides an audit demand letter, a licensee scorecard, a franchise law screening memo, a notice of non-conformity and a termination and sell-off notice, a control file index, and a rider for international licenses. Each item is annotated with the failure it prevents, because most licensing failures are operational rather than legal. Adapt the language; keep the architecture.
BPCIA Patent Exchange Checklist: A Practical Checklist
A working checklist for the BPCIA information exchange and the litigation that follows, organized by the statutory day counts. It covers the applicant's pre-filing estate mapping, process design-around, and exclusivity computation, then the dance decision and each step of the exchange with its deadline and its consequence. Later sections address the immediate action, the 180-day notice, the preliminary injunction that replaces the automatic stay, the confidentiality regime and its gaps, the interchangeability decision, at-risk launch analysis, and settlement structuring. A closing section covers the parallel regulatory, PTAB, manufacturing, and commercial tracks. Every item is written so that a "no" tells you what to do next.
Biosimilar Litigation Toolkit: Disclosure Lists and Preliminary Injunction Briefing
Working templates for BPCIA practice on both sides. It includes a patent estate mapping worksheet, a process design-around record, a dance decision memorandum, a manufacturing process disclosure scope guide, a supplemental confidentiality agreement, a sponsor patent list format, detailed statement outlines for both sides, a list exchange worksheet, a 180-day notice, preliminary injunction and opposition outlines with an irreparable harm evidence plan, an at-risk launch memorandum, a settlement term sheet, and a day-count calendar. Each carries drafting notes on what the document does, what the other side will do with it, and where each side most often fails. A closing day-count calendar ties the statutory deadlines to the parallel regulatory, PTAB, and commercial tracks. Adapt every template to the product, the patent estate, and the regulatory posture.
Biologics and the BPCIA: The Patent Dance, Biosimilar Approval, and Exclusivity
Congress gave biologics their own version of Hatch-Waxman and made almost every part of it different. This article explains the Biologics Price Competition and Innovation Act: the abbreviated 351(k) pathway, the twelve-year reference product exclusivity, the interchangeability designation, and the elaborate private information exchange known as the patent dance. It covers what the Supreme Court held in Sandoz v. Amgen about whether the dance is enforceable and when the 180-day notice of commercial marketing may be given, why biosimilar makers face patent thickets rather than a short Orange Book list, and how preliminary injunction practice replaced the automatic stay. It closes with the strategic decisions each side makes and why so few of these cases reach judgment.
Prior Art Under the America Invents Act: Section 102, the On-Sale Bar, Public Use, and the One-Year Grace Period
Prior art is everything the world already knew before you filed, and under the America Invents Act it is defined by 35 U.S.C. § 102 as patents, printed publications, public uses, sales, and anything else available to the public anywhere before the effective filing date, plus earlier-filed U.S. applications by other inventors. This article explains each category with the cases that give it content, including the public accessibility test for printed publications, the Pfaff two-part test and the Helsinn rule that secret sales still count, the experimental use negation, and the narrow one-year grace period that protects an inventor's own disclosures but not much else. It covers the pre-AIA regime that still governs older patents, the earlier-filed application rules under section 102(d), how a reference must enable and inherently or expressly disclose every claim element to anticipate, and how the clear-and-convincing burden and the forum (district court, IPR, or PGR) change what art can be used. It then gives strategy for inventors who want to avoid creating their own prior art and for challengers who want to find and prove it, with a worked example of a hardware startup that demonstrated its product at a trade show fourteen months before filing.
Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing
This toolkit collects the working documents of a trademark fair use practice, each introduced by its purpose, owner, and timing and followed by drafting commentary tied to the controlling cases. For marketing and legal teams it supplies nominative use guidelines with an approved-phrasing chart, a reference-use review form, a descriptive copy worksheet, a comparative advertising clearance memo, a model comparison chart, and model disclaimers. For disputes it provides a parody and expressive-use risk memo built around Jack Daniel's Properties v. VIP Products, a response to a cease-and-desist letter, answer language for the fair use defenses, dispositive motion outlines for both sides, an evidence matrix, targeted discovery requests, and a survey and expert planning brief. The commentary reflects the Ninth Circuit's August 2026 decision vacating the Bad Spaniels tarnishment injunction and the post-2023 cases on use as a mark, including Vans v. MSCHF and Punchbowl v. AJ Press. Every template is meant to be adapted to the controlling circuit and the facts, and the toolkit points to the companion article, guide, and checklist for the doctrine.
Damages Apportionment in Trademark Cases: A Practical Guide
When a defendant infringes a trademark on one product but runs a much larger business, how much can the plaintiff actually recover? The answer lies in the doctrine of apportionment, which limits recovery to the profits and damages actually attributable to the infringement rather than the defendant's entire revenue. This guide explains, in plain language for lawyers and business owners alike, how apportionment works under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a). It maps the unusual burden-shifting structure—where the plaintiff proves the defendant's infringement-related sales, the defendant proves its costs and the share of profit not caused by the infringing mark, and sales are treated as profit until the defendant proves otherwise. It covers the two layers of apportionment, the proximate-cause requirement, the Supreme Court's 2025 narrowing of recoverable profits to the named defendant in Dewberry, the equitable factors the Second Circuit weighs, the role of willfulness after Romag, the alternative measures of actual damages (lost profits, reasonable royalty, and corrective advertising), and when courts exclude damages testimony as speculative. It closes with a worked example and practical takeaways for both sides.