IP3 2021 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 2021 for two weeks from June 21, 2021 through July 2, 2021.
The submissions received will be made available to AST’s full Membership of leading multinational companies, some of which include ASSA ABLOY, Avaya, Cisco, Dolby, Facebook, Google, Honda, IBM, Intel, Microsoft, Oracle, Philips, Salesforce, ServiceNow, Slack, Snap, Sony, Spotify, Twitter, Uber and Verizon (each a “Participator”).
What technology categories are the focus of IP3 2021?
A: There are 16 technology categories of focused interest for IP3 2021 listed in the order of priority we would like to see:
- Advertising & Content Distribution
- Cloud Computing & Web Services
- Artificial Intelligence (AI) & Machine Learning (ML)
- Augmented (AR) & Virtual Reality (VR)
- Internet of Things (IoT) & Smart Home
- Blockchain & Financial Services
- Retail & E-commerce
- Health Tech & Healthcare IT
- Medical Devices & Imaging
- Automotive/ Mobility
- Wireless & Telecommunication
- Location-Based Services (LBS)/ Navigation
- Computer Software & Hardware
- Semiconductor Manufacturing & Equipment
- Industrial & Manufacturing
- LED Lighting & Optoelectronics
For a more detailed description of these categories click here.
The submissions 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 2021 is open for patent submissions starting June 21, 2021 through July 2, 2021.
- 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 must 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 IP3 Participators can base their analysis. The submissions are open to many technology categories but the technologies of focused interest to the IP3 Participators in the order of priority are: Advertising & Content Distribution, Cloud Computing & Web Services, Artificial Intelligence (AI) & Machine Learning (ML), Augmented (AR) & Virtual Reality (VR), Internet of Things (IoT) & Smart Home, Blockchain & Financial Services, Retail & E-commerce, Health Tech & Healthcare IT, Medical Devices & Imaging, Automotive & Mobility, Wireless & Telecommunication, Location-Based Services (LBS) & Navigation, Computer Software & Hardware, Semiconductor Manufacturing & Equipment, Industrial & Manufacturing, and LED Lighting & Optoelectronics.
- By submitting patents to IP3 2021, 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 19, 2021; the sellers must notify AST if their submitted patents are sold or encumbered during this period. The Exclusivity Period will begin on September 20, 2021 until September 27, 2021. During this Exclusivity Period, the sellers agree not to sell, transfer, or encumber any of the submitted assets. This obligation will continue after September 27, 2021, if AST notifies the submitter/seller of our tentative intent to purchase the submitted assets.
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 notice argument based on the submission to IP3 with respect to such patents.
Before moving forward with a submission, we strongly encourage you to review the IP3 2021 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:
- 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).
- 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.
- 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.
- 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 will 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.
- Unique Name for Your Offering: This is your reference name or number.
- Fixed Price: The price (in US Dollars) that you will sell your patent families (one or more) included in your submission to IP3. This represents a firm offer to sell good through at least September 27, 2021.
- Selection of 1 of the 16 Technology Categories of focused interest or other technology area of general interest to AST.
- 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.
- Summary/Comments: Brief summary or description, comments or other relevant information you wish to include in your submission.
- 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 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 can only pay entities or individuals with a US Tax ID number. US companies will have to supply a W-9, foreign companies will have 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 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 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 terminally disclaimed, we consider an offer to sell us that patent and 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 2, 2021, 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 take commercially reasonable steps to keep your submission and any supporting documents (claim charts, EOUs, etc.) confidential.
IP3 2021 will not purchase any assets with a security interest or UCC lien. Unless you can release the security interest or UCC lien before 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 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 active disputes involving their patent (e.g., any ownership disputes, etc.).
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), nonsublicensable, worldwide, fully paidup 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.”
No, this program will not consider payments over time.
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 email email@example.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.
In our standard program, which is open all year round, the price is negotiable, there are no deadlines set by AST and there are no Terms and Conditions or obligations until the execution of a Non-Disclosure Agreement or a Patent Assignment Agreement. Submitters can withdraw their offering, change their listing and/or offer the assets submitted to AST to other potential buyers at any time until there is a signed Patent Assignment Agreement between AST and the patent owner following the acceptance of an offer. For additional information about AST’s standard program, please visit our FAQs.
AST’s IP3 2021 and past IP3 programs open for a short period once a year, the price is fixed/non-negotiable, the submitter must agree to certain Terms and Conditions and the deadlines are set by AST. Per the Terms and Conditions the Submitters can withdraw their offering and/or offer the assets submitted to AST to other potential buyers only during the non-exclusivity period (until September 19, 2021). From September 20, 2021, submitters must sell to IP3 if their price is met and they are notified of an intent to purchase by September 27, 2021.
The submission to IP3 is non-exclusive until September 19, 2021. You can continue offering your assets to other potential buyers until September 19, 2021 and per the Terms and Conditions you will need to notify IP3 if your submitted patents are sold or encumbered during this period. On September 20, 2021, the Exclusivity Period will begin and you can no longer sell, transfer or encumber your submitted patents until the end of this Exclusivity Period (September 27, 2021 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 2021. 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). 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 September 20, 2021 until September 27, 2021 or later if we contact you with a tentative notice to move forward with a transaction. We recommend you review the Terms and Conditions before submitting your patents to IP3 2021.
Our goal is to let all submitters know by September 27, 2021 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 2021 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 7, 2021:
- Relevant tax-related information. U.S. companies and individuals with a U.S. Social Security Number will have to supply a W-9, foreign companies must provide a W-8BEN-E, and foreign individuals without a U.S. social security number will need to supply a W-8BEN. If you cannot supply one of the above, you should not participate in this process.
- Banking information sufficient to allow us to transfer the agreed-upon amount via ACH or wire transfer.
- 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.
- The Patent Assignment Agreement includes Exhibit C where you must 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). You will also need to provide us a list of 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 assignor/banking/patent asset information), email to you for signature, and return a pdf countersigned Patent Assignment Agreement to you by December 31, 2021. 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 2021 (the assignee) shall reimburse the assignor for any such payments made by the assignor.
We will notify you by September 27, 2021 if the decision is to not purchase your patents through our IP3 2021 program and invite you to transfer your offering to our Standard Patent Acquisitions 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 from you, your offering will be made available to our AST Members via our Standard program. In our Standard program you can change 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 withdraw your offering or your patents are sold.