Insights
Analysis from the front lines of IP & technology law.
Our attorneys write about the developments shaping intellectual property—from the PTAB and the Federal Circuit to the practical realities of protecting fast-moving technology.
Handling a Product Recall: A Practical Guide
A recall is a compressed regulatory proceeding, a logistics operation, a communications event, and the opening chapter of the product liability litigation that follows, all running simultaneously on a clock measured in hours. This guide walks the sequence: how to recognize a reportable condition and what the reporting deadlines actually require under the CPSC, FDA, NHTSA, and USDA regimes, how the recall decision is made and documented, how to scope the affected population and why traceability determines the cost, how to build and execute the notification and logistics plan, what effectiveness checks require, and how to close a recall formally. It also covers insurance, the parallel litigation and criminal exposure, and the preparation that makes all of it survivable. The organizing point is that traceability built in ordinary operations determines the cost, and that late reporting—not the defect itself—is what draws the largest penalties.
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.
Corporate Governance for Closely Held Companies: Boards, Minutes, and Decisions That Hold Up
Governance in a closely held company is not about complying with public company rules that do not apply. It is about making decisions in a way that is defensible if challenged, and about creating a record that shows how they were made. This guide covers what a board of a private company should actually do. It explains the fiduciary duties directors and officers owe and the business judgment rule that protects a sound process, then works through the mechanics that produce that protection: meetings and notice, minutes that record reasoning rather than outcomes, written consents, and the delegation of authority. It then addresses the transactions that generate most private company litigation, including interested director dealings, corporate opportunities, and compensation decisions, and the oversight duty that boards increasingly face. Later sections cover shareholder agreements and control arrangements, books and records demands, derivative litigation and special committees, indemnification and insurance, and a practical annual calendar.
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.
Anti-Money Laundering and the Bank Secrecy Act: KYC, SARs, and Beneficial Ownership Reporting
Anti-money laundering law asks businesses to do something genuinely unusual: to police their own customers on the government's behalf, at their own expense, and to do it quietly enough that the customer never finds out. The Bank Secrecy Act and its implementing regulations create the architecture—a written compliance program, customer identification and due diligence, transaction monitoring, and a reporting obligation that runs to FinCEN rather than to law enforcement directly. The Corporate Transparency Act extended a version of this into ordinary corporate formation, though its scope has narrowed considerably since enactment. This article explains who is covered, what each of the core obligations actually requires, where the criminal exposure lies for institutions and for individuals, and how the beneficial ownership regime now stands.
Policy-Limits Demand Toolkit: Demand Letters, Insurer Responses, and Excess Exposure Letters
This toolkit supplies the working papers of a time-limited policy-limits demand, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing authority. The claimant's templates are a demand decision worksheet, a limits disclosure request, a time-limited demand letter with California, Georgia, and Florida riders, and a release outline. The insurer's templates are an intake log and acknowledgment, an excess exposure letter to the insured, a request for clarification or extension, an acceptance or limits tender letter, and a written explanation of non-acceptance. Defense counsel and the insured get a report-and-advisory letter and a letter demanding that the insurer settle within limits. Further templates cover a multiple-claimant global settlement invitation with an interpleader decision memo and an outline of an assignment, covenant not to execute, and Coblentz-type agreement. A deadline tracker, an FAQ, and takeaways close the toolkit.
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.
The Federal Estate and Gift Tax: Exemptions, Portability, and Lifetime Transfer Planning
The federal transfer tax system taxes gratuitous transfers of wealth through three related taxes—gift, estate, and generation-skipping transfer—that share a single lifetime exemption and a common rate. Because the exemption is historically large, the system now reaches very few estates directly, which has shifted planning away from tax avoidance toward basis maximization for most families and toward aggressive lifetime transfers for the few still exposed. The mechanics that matter are the unified credit and its scheduled reduction, portability of a deceased spouse's unused exclusion, the marital and charitable deductions, and the generation-skipping tax that operates as a separate and unforgiving overlay. This article covers how the taxes fit together, the deductions and elections that shape most plans, the principal lifetime techniques and their risks, and the compliance obligations that follow a death.
Mastering Document Discovery: A Comprehensive Guide to Objecting and Responding to Requests for Production
Requests for production under Federal Rule of Civil Procedure 34 are the workhorse of modern civil discovery, and the quality of a party's objections and responses often determines whether a case is won, settled, or sanctioned. This guide explains the scope of discovery under Rule 26(b)(1) and the transformative 2015 proportionality amendments, the strict response requirements of Rule 34(b)(2) including the duty to state whether documents are being withheld, and the courts' growing hostility to boilerplate objections. It covers electronically stored information in depth—form of production, native versus TIFF, metadata, collaboration tools, ephemeral messaging, and technology-assisted review—as well as privilege logs, waiver and protection under Federal Rule of Evidence 502, and clawback orders. The article also addresses the litigation hold, the meet-and-confer duty, Rule 37 sanctions, spoliation under Rule 37(e), and third-party subpoenas under Rule 45, with worked examples and model objection-and-response language. It is written so that judges, practitioners, and non-lawyers alike can follow the mechanics and the strategy of document discovery.