Legal 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.
Choice of Law, Forum Selection, and Where Your Dispute Will Be Decided
Two short paragraphs near the end of most contracts decide which state's law governs the deal and which court hears the fight. They are drafted in minutes, negotiated rarely, and worth more than most of the substantive terms they sit behind, because the same facts produce different outcomes under different states' law and in different courtrooms. This article explains how each clause works and how courts actually treat them. It covers the choice of law analysis under the Restatement (Second) of Conflict of Laws, the substantial relationship and fundamental policy limits that let a court disregard the parties' choice, and the mandatory rules on non-competes, consumer protection, and franchise relationships that override contract language. It then covers forum selection: the difference between exclusive and permissive clauses and why that single word decides motions, enforcement under M/S Bremen and Carnival Cruise Lines, the procedural framework Atlantic Marine imposed for transfer under section 1404(a), and what happens when the chosen forum is a state or foreign court. Sections on the interaction with arbitration clauses, jury waivers, consent to jurisdiction and service, and internal affairs follow, with drafting language, a worked example, an FAQ, and related reading.
Family and Medical Leave: The FMLA, State Programs, and How Leave Interacts with the ADA
Leave administration is where employers with no dedicated HR function most reliably create liability, because three legal regimes govern the same absence and each has different triggers, different durations, and different consequences. This article explains how they fit together. It covers FMLA coverage and eligibility, what counts as a serious health condition, the notice and certification sequence with its precise deadlines, intermittent and reduced-schedule leave and the attendance policies that collide with it, and the job restoration and benefits obligations at the end. It then addresses the growing patchwork of state paid family and medical leave programs and paid sick leave laws, how they stack with the FMLA, and how payment interacts with an employer's own policies. A long section covers the interaction with the ADA, including leave as a reasonable accommodation beyond FMLA exhaustion and the maximum leave policies that generate systemic enforcement actions, followed by workers compensation coordination, a worked example, an administration checklist, and an FAQ.
Software License Agreement Review Checklist: A Practical Checklist
A software license agreement is forty pages in which three unmarked clauses carry most of the risk: a liability cap the size of a team dinner, a clause licensing your uploaded data to "improve" the vendor's products, and an audit right priced at list. This checklist gives a reviewer a systematic, repeatable order of attack: pre-review context (deployment model, business stakes, regulatory regime), the license grant and its metric and audit rights, SaaS service levels and support, data ownership/security/breach/exit, IP and open source, warranties and disclaimers, indemnification, the all-important limitation-of-liability cap and carve-outs, and term, termination, escrow, and Section 365(n) continuity. Each phase pairs checkboxes with the WHY, the good-acceptable-dangerous spectrum, and the case law that gives the clause teeth (Vernor, Adobe v. One Stop Micro, MDY v. Blizzard, ProCD/Specht/Nguyen, UCC 2-316 and 2-719, 11 U.S.C. 365(n), Mission Product). It closes with common mistakes, primary authority, and related mclaw.io resources.
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.
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.