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 Between a Design and Utility Patent: A Practical Checklist
Design patents and utility patents share the word "patent" and almost nothing else: a utility patent protects how an invention works under 35 U.S.C. § 101; a design patent protects how an article looks under 35 U.S.C. § 171. They differ in term, claim structure, examination, cost, the infringement test, and—dramatically—damages. This checklist helps an inventor, founder, or counsel decide whether to file a utility patent, a design patent, or both, by working through what the value of the invention really is, how each is examined and enforced, the total-profit damages superpower of § 289 after Samsung v. Apple, the post-LKQ rise in the design obviousness bar, the broken-line drawing strategy that sets design scope, and the international filing deadlines (12 months for utility, 6 months for design). It also flags the overlap with trade dress and copyright.
Finding Evidence of Inequitable Conduct in Patent Prosecution: A Comprehensive Guide for Attorneys and Inventors
This litigator's companion guide explains how to find, plead, and prove (or defend against) inequitable conduct in patent prosecution. It walks through the heightened pleading requirements of Exergen Corp. v. Wal-Mart Stores under Federal Rule of Civil Procedure 9(b), the demanding Therasense standard of but-for materiality and specific intent to deceive, and the duty of candor codified at 37 C.F.R. Section 1.56. It maps the practical sources of evidence a litigator mines—file histories, Information Disclosure Statements, foreign counterparts, inventor declarations, and assignment records—and lays out discovery strategy, crime-fraud and prosecution-bar issues, the use of technical and patent-practice experts, and the clear-and-convincing burden at trial. Worked hypotheticals illustrate how the pieces fit together, and a closing FAQ answers the questions clients ask most. The article is written so a judge, a practicing lawyer, and an inventor can all follow it.
Copyright FAQs: Answers to Common Copyright Questions
This hub FAQ answers the questions people most often ask about U.S. copyright law, in plain language for creators, businesses, lawyers, and the merely curious. It explains what copyright is and where it comes from, what it does and does not protect, the exclusive rights bundle, how protection arises automatically on fixation, and how long it lasts under the layered rules for old and new works. It walks through registration and why timing is everything, fair use after Google v. Oracle and Warhol v. Goldsmith, the DMCA takedown system, how infringement is actually proved through access and substantial similarity, the full range of remedies including the small-claims Copyright Claims Board, work made for hire, transfers, and the powerful and deadline-driven right to terminate them. Worked examples and clearly labeled hypotheticals keep the answers concrete. Throughout, the article links to deeper mclaw.io guides on each topic.
Trademark Overview: Obtaining Protection and Licensing
A trademark is only as valuable as the rights you can actually acquire, keep, and exploit. This Part 3 of our four-part trademark overview series explains how rights arise (use versus federal registration), walks step-by-step through the USPTO application and examination process, and untangles the difference between the Principal and Supplemental Registers. It then turns to the business side of brands: licensing a mark without committing the cardinal sin of "naked licensing," selling a mark together with its goodwill to avoid an "assignment in gross," and pledging a trademark as loan collateral. Along the way it explains the quality-control rule of Dawn Donut, Barcamerica, and Eva's Bridal, the anti-assignment-in-gross doctrine, the hidden trap of the "accidental franchise," and the Madrid Protocol route to international protection. The article is written so a judge, a transactional lawyer, and a first-time founder can all follow it.
Copyright vs. Trademark vs. Patent: Understanding the Three Pillars of IP
Copyright, trademark, and patent are not interchangeable labels for the same thing; they are three different legal systems that protect three different kinds of value, and trade secret quietly stands as a fourth. This article explains in plain language what each one protects, where its law comes from, how the right arises, how long it lasts, who registers it, what symbol marks it, and how an infringement case is actually proved. The centerpiece is a single worked example—an ordinary athletic sneaker—that turns out to be wrapped in all four kinds of protection at once. You will leave able to look at any product, song, app, gadget, or brand and name which kind of IP is doing the work, and which kind you should be reaching for. A decision guide and FAQ tie the pieces together.
The Evolution of Trade Dress Protection for Product Design and Configuration: A Comprehensive Case Law Analysis
This article is the deep case-law spine of mclaw.io's trade dress coverage. It traces the doctrine for product design and configuration through the four foundational Supreme Court decisions decided between 1992 and 2001—Two Pesos v. Taco Cabana, Qualitex v. Jacobson, Wal-Mart v. Samara, and TrafFix v. Marketing Displays—and the circuit law that has applied them. Written for judges, practitioners, and business readers alike, it explains the outcome-determining line between product packaging (which can be inherently distinctive) and product design (which can never be, and always demands secondary meaning), along with the elusive "tertium quid" middle category. It works through utilitarian functionality under Inwood, the Morton-Norwich evidentiary factors, aesthetic functionality under Qualitex, and the way TrafFix demoted alternative-design evidence and elevated expired utility patents. It surveys how the circuits have handled footwear, multi-tools, snack food, restaurant decor, beverage bottles, and smartphones, pays close attention to who bears the burden of proving (non)functionality and to the expert and survey evidence that decides close cases, and closes with worked hypotheticals, industry-by-industry guidance, a comparative look at trade dress abroad and at emerging pressures from AR, 3D printing, and AI, and a practical FAQ. The throughline is the law's enduring effort to balance brand identity against the public's right to copy unpatented, functional features.
Managing Willfulness Risk After a Patent Notice Letter: A Practical Guide
This guide takes a company from the day a patent notice letter arrives to the point where it has a defensible record on willfulness, whether the matter ends in silence, a license, a redesign, an inter partes review, or a lawsuit. It opens with the decisions to make before acting, then sets out twelve steps: triage, routing to counsel and controlling internal communications, a litigation hold, assessing declaratory judgment risk, a privileged preliminary analysis, choosing between a formal opinion and informal advice, documenting a design-around, deciding on a Patent Office challenge, writing the response letter, managing customers and suppliers, tendering to insurers, and monitoring. Each step explains what to do, why, the governing authority, common pitfalls, timing, and typical cost ranges. A separate part covers the patent owner who is drafting the letter. A timeline and cost table, an extended worked example involving a lighting manufacturer and a patent assertion entity, common mistakes, an FAQ, and practical takeaways close the guide.
Post-Mortem Publicity Rights Clearance Checklist: A Practical Checklist
This checklist helps filmmakers, publishers, advertisers, merchandisers, game studios, and AI developers decide whether they can use a deceased person's name, image, voice, or likeness, and what they must do first. It is organized in phases: classify the use, identify the person and the domicile at death, map every state whose law may apply, find the right owner through state registries and trademark records, test the use against statutory exemptions and the First Amendment, and apply the newer digital replica rules for AI voices and synthetic performances. Later phases cover the federal overlay of false endorsement, trademark, and copyright, then licensing, documentation, and release. Red-flag boxes, a table of terms and registration rules, a short worked example, and a list of common failure points make it usable on a live project.
Copyright Preemption Under Section 301: When Federal Law Wipes Out Your State Law Claim
This article explains how 17 U.S.C. § 301 wipes out state law claims that overlap with copyright, and why it reaches ideas and facts that copyright itself refuses to protect. It walks through the two-part test, the extra element inquiry, and the claim-by-claim results for contract, idea submission, hot news, unjust enrichment, conversion, trade secrets, and the right of publicity. It reads the leading opinions closely and marks where the circuits disagree, including the unresolved contract split the Supreme Court declined to take up in ML Genius. It explains how scraping disputes have split district judges in the Northern District of California on terms of service claims. It also covers complete preemption, removal, remand, what Royal Canin does to post-removal amendments, and the limitations and fee consequences that follow when a state claim is recast as a federal one. Readers get worked hypotheticals and practical steps for plaintiffs, defendants, and contract drafters.
Copyright Registration of Computer Programs
Software is protected by copyright the instant it is written, but registering that copyright with the U.S. Copyright Office is what turns a quiet legal right into an enforceable one—and it is the gateway to federal court, statutory damages, and attorney's fees. This guide explains what copyright in code actually covers (and the large swath of functional material it does not), drawing on Google v. Oracle, the abstraction-filtration-comparison test, and the reverse-engineering line of cases. It walks step by step through the eCO application, the source-code deposit rules, and the special trade-secret redaction options that let developers register without surrendering their crown jewels. It covers ownership and work made for hire, derivative versions, screen displays and graphical user interfaces, user manuals, video games, HTML, object code and the Rule of Doubt, special relief when the code is gone, and how a registration is actually used to prove infringement. The article is written for developers, founders, in-house counsel, judges, and curious laypeople alike, with worked examples throughout.
Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide
A cease-and-desist letter is usually the opening move in a trademark dispute, and how it is written—or answered—can shape everything that follows. This guide explains both sides of the exchange in plain language for lawyers and business owners alike: how a trademark owner should investigate, calibrate, and draft a letter that advances its position without creating new risk, and how a recipient should evaluate and respond to a letter objecting to its use of a mark. It walks through what a cease-and-desist letter does, the pre-suit investigation that should precede one, the claims and remedies that give a letter its bite (including Romag Fasteners and Octane Fitness), and the strategic traps of overreach—declaratory-judgment exposure under MedImmune and reputational blowback from trademark bullying. On the response side, it covers the holding letter, the information request, the sober merits-and-defenses assessment, the full menu of options, and how to draft a substantive reply that persuades rather than provokes. It folds in the Trademark Modernization Act's restored presumption of irreparable harm and closes with a worked example, a common-mistakes survey, and an FAQ.
The Geographic Scope of Common-Law Trademark Rights: A Practical Guide
Common-law trademark rights are local, not national. They reach only as far as a business has actually sold, advertised, built a reputation, or can realistically expect to expand—and that simple fact drives a surprising amount of real-world strategy. This practical guide focuses on what to do with the geographic-scope doctrine rather than where it came from. It maps the three zones of protection, shows how to prove territory with sales and advertising evidence, explains how federal registration and constructive use under 15 U.S.C. § 1057(c) convert local rights into national ones, and works through the Dawn Donut rule and its erosion in the internet age. It covers concurrent-use proceedings under Section 2(d), coexistence agreements, expansion and franchising playbooks, cease-and-desist strategy, and a litigation checklist, and it closes with a worked hypothetical and an FAQ. For the case-history deep dive behind the doctrine, it cross-links to a companion article.