Chapter 5 address precursors to the drafting and negotiation of an IP agreement, including term sheets, letters of intent and confidentially agreements. Attention is given to the effect of initial licensing overtures on declaratory judgment jurisdiction (Sandisk v. STMicroelectronics). The provisions of mutual confidentiality and nondisclosure agreements are discussed in detail, along with cases analyzing these agreements (Celeritas v. Rockwell).

Chapter 22 discusses a range of issue surrounding the ability of a licensee of IP to challenge the licensed IP. It begins with the doctrine of assignor estoppel, then describes the related doctrine of licensee estoppel, which was rejected in Lear v. Atkins. The chapter then traces the various doctrines that have emerged and evolved since Lear including the license eviction doctrine. It then addresses a licensee’s ability to challenge a licensed patent under the Declaratory Judgment Act and the evolution of cases under the DJA from Gen-Probe v. Vysis to MedImmune v. Genentech. It next explores the contours of no-challenge clauses in patent license agreements (Flex-Foot v. CRP), and explores the concept of no-challenge in copyright and trademark licenses (Idaho Potato Comm.)