IP3 2019 FAQ

AST’s Industry Patent Purchase Program (IP3) is a fixed price, fixed term, collaborative patent purchase program run by AST every year since 2016.

Based on the success of the past year’s IP3, AST is inviting all patent owners to submit their patents for sale at the price they set to IP3 2019 for a two-week period from July 15 through July 26, 2019. 

The submissions received will be made available to AST’s full Membership of leading multinational companies, some of which include Avaya, Cisco, Dolby, Ford, Google, Honda, IBM, Intel, Microsoft, Oracle, Philips, SAP, Sony, Twitter, Uber and Verizon, as well as non-member operating companies who have joined the program as IP3 Contributors (each a “Participator”). 

Changes from last year’s program include:

  • An initial Non-Exclusive Review period. This year the submissions will be non-exclusive from the date of the submission until September 30, 2019. The submitters can offer their patents submitted to IP3 to other potential buyers until the Exclusivity period begins on October 1, 2019 for a period of approximately 12 days, unless your patent(s) are selected for purchase in which case the exclusivity will continue through closing of the transaction.
  • More technology categories of focused interest.
  • A slightly longer period of time for IP3 Participators to review the submissions.

Below are the 14 technology categories of focused interest in IP3 2019, along with their brief descriptions:

Advertising & Content Distribution:

Online advertising through Blogs, Emails, Newsletters, Social Media, Shares, Product reviews, Mobile Advertising, etc., as well as content distribution via various media channels including Internet TV, CATV, VoD, Streaming Media, P2P, Broadband, etc.

Artificial Intelligence (AI) & Machine Learning (ML):

AI creates intelligent machines that work like human brains.  ML studies algorithms and statistical models to perform tasks without any external inputs.  AI & ML are applied in fields such as Gaming, Natural Language Processing, Vision Systems, Speech Recognition, Intelligent Robots, and Handwriting Recognition.  AI & ML are included in products such as Virtual Assistant, Voice Recognition, Flying Drones, Media Streaming Services, Smart Home and Content Personalization.


Augmented (AR) & Virtual Reality (VR):

Augmented reality (AR) is a type of interactive, reality-based display environment, which has capabilities of producing computer-generated display, sound, text and effects to enhance the user’s real-world experience.  Examples of AR devices include, Head mounted Displays, Smart Glasses, Smart Helmet, and APPs.  VR technology most commonly uses VR headsets or multi-projected environments, sometimes in combination with physical environments or props, to generate realistic images, sounds and other sensations.


Automotive & Mobility:

Automotive deals with design, development, manufacturing, marketing, and selling of motor vehicles and its parts.  Mobility covers multi-modal transport systems, VANETs (Platooning), Autonomous Fleets, Vehicle Electrification, Ride Sharing or Carpooling Services, Vehicle Software, Vehicle Control and Diagnostics, Electrical and Hybrid Vehicles, Vehicle Electronics, etc.


Blockchain & Financial Services:

Blockchain is a growing list of records linked using cryptography with each record having a cryptographic hash of previous record, a timestamp, and transaction data.  Blockchain is managed by a peer-to-peer network and provides secure and permanent ledger type of transaction.  It is used in many industries for safe and simple data processing.  Financial Services cover transactions related to Distributed Ledger, Digital ID, Data Sharing, Inventory Record Keeping, IOT, Banking, Transaction Security, Insurance, etc.


Cloud Computing & Web Services:

Cloud computing covers on-demand availability of remote data storage, computing power and software.  Web services cover the tasks performed through the Internet.  Examples of cloud computing include SaaS, IaaS (infrastructure as a service), Virtualization, Distributed systems, web services, PaaS (platform as a service), RaaS (recovery as a service), DaaS (device as a service), Social Networking, Online Storage, Email, E-commerce, Searching, etc.


Computer Software & Hardware:

Computer software relates to a set of instructions such as applications and the operating system.  Computer hardware includes physical, tangible parts of a Computer, Server, Data Center, such as the Cabinet, Central Processing Unit, Monitor, Keyboard, Storage, Graphics Card, Sound Card, Speakers, Motherboard, etc.


Health Tech & Healthcare IT:

Digital health solutions and devices that may use databases, applications, mobiles, wearables, image processing, web services to facilitate connected diagnosis, treatment and monitoring of health.  Example devices include personal EKG, fitness bands, wearable smart devices, portable monitoring and diagnostic devices, electronic medical record, healthcare software, hospital management, telemedicine, robotic surgery, personal health monitoring APPs and software, etc.


Internet of Things (IoT) & Smart Home:

IoT and smart home technology controls hardware devices and home appliances through the Internet.  This technology includes Smart Appliances, Smart Lighting System, HVAC Systems, Smart Security Systems, Environmental and Industrial Monitoring Systems, Wearable Devices, Logistics Management, Retails Industry, etc.

LED Lighting & Optoelectronics

Optoelectronics cover electronic devices that source, detect and control light using components such as Photodiode, Solar Cells, LEDs and Laser Diodes.  These devices can be found in many applications such as military services, telecommunications, automatic access control systems and medical equipment.  LED lighting covers lights, luminaires, lighting devices, etc. that use LED as main source of light.  It finds application in night lighting, art lighting, outdoor lighting, signage, lighting in electronics and automotive industries, etc.


Location-Based Services (LBS) / Navigation:

LBS use real time geo data to provide information, entertainment or security.  Several applications include proximity-based marketing, travel information, roadside assistance, mobile workforce management, mobile apps, advertisements, geo-fencing, media streamlining, monitoring real time location, etc.


Medical Devices & Imaging:

Technology for clinical analysis and medical intervention.  Example technology includes monitoring and diagnostic devices, sleep apnea and sleep therapy, diabetes monitoring and management, implants and prosthesis, spinal and orthopedics, magnetic particle imaging, photo acoustic imaging, endoscopic devices, tomography, echocardiography, surgical devices, radiography, MRI, nuclear medicine, ultrasound, cardiovascular, pulmonary and general surgery devices, etc.


Semiconductor Manufacturing & Equipment:

Semiconductor technology covers components, devices and processes used for fabricating components and ICs.  Exemplary products include dicing machine, probing machines, sliced wafer demounting, cleaning machine, wafer edge grinding machine, polish grinders, transistors, chips, FPGAs, ICs, etc.


Wireless & Telecommunication:

This technology relates to exchange of information over significant distances and refers to all types of voice, data and video transmission, Mobile Phones and Devices, Network technologies such as M2M communications, vehicle-to-vehicle communication, Adhoc-networks, LTE, LTE-Advanced, 3G, Wi-Fi, routers, base stations, protocols, conferencing, satellites, antennas, wireless ICs, broadband, telephones (wired and wireless), microwave communications, fiber optics, satellites, television broadcasting and telegraphs, communication software, billing and service plans, call centers, PBX systems, telecom monitoring, Bluetooth, NFC, RFID, etc.

The submissions to IP3 2019 are also open to other technology areas of general interest to AST.  The complete list of technologies can be found at: http://www.ast.com/list-of-the-technology-categories-in-which-ast-has-interest/

IP3 2019 is open for patent submissions starting July 15, 2019 through July 26, 2019.

  • Patent holders looking to submit their patents for consideration may submit one or multiple patent families per submission at a fixed price. A preference will be made for single family submissions or related families. Unrelated families may be submitted separately.
  • Families submitted must have at least one active granted patent in the US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea. All the assets in the family are required to be included in the submission.
  • If a submission contains more than one patent, the submitter should try to identify one or more featured patent(s) upon which the Participants can base their analysis. The submissions are open to many technology categories but the technologies of focused interest to the IP3 Participators are: Advertising & Content Distribution, Artificial Intelligence (AI) & Machine Learning (ML), Augmented (AR) & Virtual Reality (VR), Automotive & Mobility, Blockchain & Financial Services, Cloud Computing & Web Services, Computer Software & Hardware, Internet of Things (IoT) & Smart Home, LED Lighting & Optoelectronics, Location-Based Services (LBS) / Navigation, Medical Devices & Imaging, Health Tech & Healthcare IT, Semiconductor Manufacturing & Equipment, and Wireless & Telecommunication.
  • By submitting patents to IP3 2019, sellers agree to the Terms and Conditions. The sellers’ offers will be non-exclusive to the IP3 Participators from the date of their submission until September 30, 2019; the sellers must notify AST if their submitted patents are sold or encumbered during this period. The exclusivity period will begin on October 1 until October 11, 2019. During the exclusivity period, the sellers agree not to sell, transfer, or encumber any of the submitted assets. This obligation will continue after October 11, 2019 if AST notifies the submitter/seller of our tentative intent to purchase the submitted assets. 

All submissions will be reviewed as received and all sellers will be notified of their patent status by October 11, 2019.

You will need to agree to the Terms and Conditions for IP3 to evaluate your patent for potential purchase. Submissions of patents to IP3 do not serve as notice to IP3 or its Participators or provide knowledge to IP3 or its Participators of such patents for any purpose (including, e.g., assertions of willful or indirect infringement).  Any party submitting through this process agrees to waive any such argument with respect to such patents based on the submission to IP3.

Before moving forward with a submission, we strongly encourage you to review the IP3 2019 Terms and Conditions and the Patent Assignment Agreement with an attorney.

We will take reasonable steps to keep all submissions confidential.  Obviously, if we are able to transact with you, we may record the change of ownership with relevant Patent Offices in the world in the ordinary course of business.  Also, please note we may discuss publicly generalized information about IP3 (e.g., number of total submissions, breakdowns by technology area, etc.).  The provisions regarding confidentiality are specified in Section 3 of the Patent Offer Submission Terms and Conditions document.

IP3 is under no obligation to transact, and the decision to transact on a submitted patent is at IP3’s sole discretion up to the point where we return a fully executed copy of the Patent Assignment Agreement to you.

  • As part of the submission process, you will need to agree to certain terms and conditions for IP3 to evaluate your patent for potential purchase.
  • Once the Patent Offer Submission Terms and Conditions have been accepted, you will complete the Submission form. We will need the following information in your submission:
     
    1. Submitter’s Name: This is the name of the contact person. This should either be the owner of the patent(s) (if owned by an individual) or someone with the authority to sell the patent(s) (authorized representative if owned by a company/entity or broker/intermediary who represents the patent owner).
    2. Patent Owner’s Name: Name of the company/entity or individual(s) who is the current owner/assignee of the patent.  Please also advise of the state of incorporation of the company.
    3. Address: If the patent(s) owner is a company, the company address; otherwise your personal address. We will also require the address of the patent broker if the submission is made by a broker/intermediary.
    4. Submitter’s Email Address and Phone Number: This is the email address and phone number of the contact person.  It is very important because this is the ONLY way we are going to communicate with you.  If you input the wrong information, we will have no way to get in contact with you in the event we wish to transact with you.
    5. Unique Name for Your Offering: This is your reference name or number.
    6. Fixed Price: The price (in US Dollars) that you are willing to sell your patent families (one or more) included in your submission to IP3.  This represents a firm offer to sell good through at least October 11, 2019.
    7. Selection of 1 of the 14 Technology Categories of focused interest or other technology area of general interest to AST.
    8. Patent List: First, input the main patent number which must be an active granted patent in the US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea; the patent title. Then input ALL the patent family members of the main patent: country, asset number (patent, published application or application number), status (active, expired, lapsed or abandoned). If you wish to include more than one patent family in the submission, add another main patent, its family members and repeat the same process.
    9. Summary/Comments: Brief summary or description, comments or other relevant information you wish to include in your submission.
    10. Supporting Documents: Offering memorandums, executive summaries, patent family tree, technical analysis, claim charts, white papers, presentations or marketing materials you wish to include in your submission.

You must have the full authority to sell the asset(s), either as the owner or as someone fully empowered by the owner with the authority to sell the asset(s).  While we reserve the right to refuse to transact for any reason, we obviously will not be willing to transact absent satisfactory confirmation on this point. We are only able to pay entities or individuals that have a US Tax ID number. US companies will be required to supply a W-9, foreign companies will be required to provide a Form W-8BEN-E, and individuals will need to supply a Form W-9 (SSN) or a Form W-8BEN. [Note: Forms available at https://www.irs.gov/.]

Please make only one submission with all the owner/current assignees listed.

We will accept one or multiple related patent families per submission, although we prefer single families per submission. You are also free to make multiple submissions. Please note the fixed price will be for all patents and their families in each submission.

Yes, IP3 will purchase the entire patent family only. Under this program, we consider a patent family to be all assets that are linked directly or indirectly to a priority filing (INPADOC extended patent family – EPO definition) which includes priorities, continuations, continuation in parts, divisionals and foreign counterparts patent applications (including pending, expired, and abandoned patent applications) and all granted patents (including active, lapsed, withdrawn, and expired patents).  

If the patents listed in the submission are subject to a terminal disclaimer or have patents terminally disclaimed from it, then all patents linked by a terminal disclaimer including any patents and patents terminally disclaimed therefrom must also be included as part of the patent family. Because of the ramifications of splitting the ownership of terminally disclaimed patents, if you do submit a patent asset that is terminally disclaimed, we consider an offer to sell us that patent as well as all other assets relevant to the terminal disclaimer at the amount you indicate in your submission. No additional consideration will be provided by IP3.

If a pending application (provisional or non-provisional) is a part of a family with at least one active granted patent in the US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea, please submit it. We will not consider submissions with only pending applications.

The main granted patent in the US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea must be active at the time of your submission. If the main patent has expired patents or applications as patent family members, please include them in your submission as family members.  We will not consider submissions with only expired assets.

You may submit design patents or applications that are family members of a utility active granted patent in the US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea. We will not consider submissions with only design assets.

If you have a patent number assigned by the time the portal closes on July 26, 2019, please submit it. We require at least one active granted patent in the US, China, Europe, France, Germany, United Kingdom, Japan, Taiwan, or the Republic of Korea in the submission.

Follow the instructions on the submission form to include claim charts and other supporting documents with the patent submissions.

No. Our confidential obligation is included in the Terms and Conditions. We will agree to take commercially reasonable steps to keep your submission and any supporting documents (claim charts, EOUs, etc.) confidential.  

IP3 2019 will not purchase any assets with a security interest or UCC lien.  Unless you can release the security interest or UCC lien prior to or as part of a purchase by IP3 (at your cost), the submission should not be made.

This information will need to be provided before any purchase; preferably with the information provided in the Submission Form under the confidentiality provision of the Terms and Conditions.  If not supplied with the submission, the parties that are notified of IP3’s tentative intent to purchase must supply all the known encumbrance information related to the patent(s) in Exhibit C of the Patent Assignment Agreement. Those parties will also need to provide us with a list of any enforcement activities relating to the patent (e.g., any active enforcement proceedings, such as an IPR or any other active proceeding through the PTAB at the U.S. Patent and Trademark Office), and a list of currently active disputes involving their patent (e.g., any ownership disputes, etc.).

This program will only consider purchases. Please feel free to submit assets available to license to AST’s standard program at https://www.ast.com/sell-to-ast/

Yes, Section 1.3 of the Patent Assignment Agreement, includes the following language: “As of the Effective Date, Assignee hereby grants to Assignor, for the benefit of Assignor and its parents and subsidiaries, for the life of all the Patents, an irrevocable, non­exclusive, non­transferable, non­assignable (including by operation of law or otherwise), non-sublicensable, worldwide, fully paid­ up right and license under the Patents, to develop, have developed, make, have made, use, have used, sell, offer to sell, import, export and otherwise transfer, dispose of, or exploit any product, service, method or process, and to authorize third parties to practice any method on behalf of Assignor.  The foregoing license-back includes a license to a successor of Assignor, as long as the control of such successor is retained directly or indirectly by Assignor.” 

Yes, pursuant to the Patent Assignment Agreement that will be used for all transactions the patent owner will have a license back to practice the invention.

No, we will not consider edits to the PAA. This program requires the use of the Patent Assignment Agreement provided at ast.com/ip3.

Patent sellers who have missed the IP3 2019 deadline may still submit patents for purchase by AST to our standard program at https://ast.com/sell-to-ast/.

You may submit patents for purchase by AST to our standard program at  https://www.ast.com/sell-to-ast/.

No, you need to choose between AST’s standard program and the IP3 program. You may transfer your portfolio from our standard program to IP3 if the patent list is the same and your listing is active. To transfer your listing to IP3, please send an email to patents@ast.com with your reference/AST Lot number and your fixed price. Please also attach a signed copy of the Terms and Conditions to your email. 

You may submit it to IP3 2019 if the current status of the AST’s standard listing is closed or the patent and its family members are removed from the active listing. You can check the status of your lot and make any changes to your AST’s standard program listing prior to submitting your portfolio to IP3 2019 by contacting patents@ast.com.

The submission to IP3 is non-exclusive until September 30, 2019.  You can continue offering your assets to other potential buyers until September 30, 2019 and per the Terms and Conditions you will need to notify IP3 if your submitted patents are sold or encumbered during this period.  On October 1, 2019, the exclusivity period will begin and you will no longer be able to sell, transfer or encumber your submitted patents until the end of the Exclusivity Period (October 11, 2019 or later if we contact you with a tentative notice to move forward with a transaction). For additional details, please refer to the Submission Terms and Conditions.

Your patent broker may represent you in your submission to IP3 2019. We accept the submissions from the patent owners or their brokers/intermediaries. You or your patent broker may continue to offer your patents to other potential buyers during the Non-exclusive Review Period (from the time of your submission until September 30, 2019).  However, you or your patent broker will need to withdraw the offer for sale with other potential buyers when the IP3’s Exclusivity Period begins on October 1, 2019 until October 11, 2019 or later if we contact you with a tentative notice to move forward with a transaction.  We recommend you review the Terms and Conditions prior to submitting your patents to IP3 2019. 

Our goal is to let all submitters know by October 11, 2019 if their submissions are tentatively accepted to move to the next step for purchase. With respect to sellers whom AST contacts about purchasing their patents, please understand such notice is tentative and will require the seller to supply additional information to AST.

IP3 2019 will be making all purchases on behalf of a group of companies. You will not know, nor can we identify any specific company’s interest in your patent.

If we tentatively select your patent(s) for purchase, we will contact you with additional next steps.  As part of those next steps, you must provide the following information by October 21, 2019:

  1. Relevant tax-related information. U.S. companies and individuals with a U.S. Social Security Number will be required to supply a W-9, foreign companies are required to provide a W-8BEN-E, and foreign individuals who do not have a U.S. social security number will need to supply a W-8BEN. If you are unable to supply one of the above, you should not participate in this process.
  2. Banking information sufficient to allow us to transfer the agreed-upon amount via ACH or wire transfer.
  3. A signed Patent Assignment Agreement, available for reference and download at ast.com/ip3, with IP3. Other than filling in your contact/banking information, no modifications, additions, or deletions to this form agreement will be permitted.
  4. The Patent Assignment Agreement includes Exhibit C where you are required to list all known encumbrances relating to the patent. If there are no known encumbrances, please mark as “None”.  You will also need to provide us with a list of any enforcement activities relating to the patent (e.g., any active enforcement proceedings, such as an IPR or any other active proceeding through the PTAB at the U.S. Patent and Trademark Office).  And, you will also need to provide us a list of currently active disputes involving your patent (e.g., any ownership disputes, etc.).

As alluded to the above, even if we notify you of our intent to purchase your patent(s), you are still required to provide us with the additional information and IP3 reserves the right to not transact with you for any reason (or for NO reason whatsoever) up to the point where we return a fully executed copy of the Patent Assignment Agreement to you.

If all the above is in order and assuming IP3 is satisfied with the follow-up material you have provided and accepts your submission, we will fill-in/complete the agreement details (current assignee/banking/patent asset information), email to you for signature, and return a pdf countersigned Patent Assignment Agreement to you by December 31, 2019.  Barring any setbacks, IP3 will make payments within 30 business days thereafter.

With respect to the patents that are alive/active at the time of your submission, you will be responsible to pay the maintenance fees or annuities that are due or become due from the date of the submission until the effective date of an executed Patent Assignment Agreement. 

With respect to the maintenance fees or annuities that become due after the effective date and up to ten (10) days after the effective date of a Patent Assignment Agreement, you (the assignor) shall pay the fees and IP3 2019 (the assignee) shall reimburse the assignor for any such payments made by the assignor.

For additional information, please refer to the Terms and Conditions and Patent Assignment Agreement.

We will notify you by October 11, 2019 if the decision is to not purchase your patents through our IP3 2019 program and invite you to transfer your offering to our Standard Patent Acquisition program on a non-exclusive basis. We will ask you to notify us if you do not wish to transfer your IP3 submission and, unless we hear back from you, your offering will be made available to our AST Members via our Standard program.  In our Standard program you will be able to make any changes to your listing (price expectation, patent list, marketing materials, etc.), offer your patents to other potential buyers or close your listing at any time if you decide to withdraw your offering or your patents are sold.

If you have additional questions, please email IP3@ast.com.