Bankruptcy

[...]a fully paid-up IP license (without other ongoing responsibilities by the licensee) would not be considered an executory contract. A nonexhaustive list of proactive measures an entity can pursue in this context include (1) determine which existing IP contracts are likely to be considered executory; (2) review such existing executory IP contracts for the issues outlined above and the terms that will likely drive the treatment of IP in the event of bankruptcy; (3) look for opportunities in existing IP contract (e.g., requests for re-pricing; new statements of work; disputes) to renegotiate/add/supplement terms that may be unfavorable to the entity on these issues; (4) plan carefully for these issues in new IP contracts; and (5) consider alternative approaches to the use of IP rights that may avoid such issues-for example, the sale of IP versus the licensin of same. Prior to joining Fish, Lance served as a Judicial Law Clerk for the Honorable Kara F. Stoll of the U.S. Court of Appeals for the Federal Circuit, and the Honorable Gloria M. Navarro of the U.S. District Court for the District of Nevada. 1.