IP3 2023 FAQs

Following are the 15 high-technology categories of focused interest for this year’s IP3:

• Advertising & Content Distribution
• Artificial Intelligence & Machine Learning
• Augmented Reality/Virtual Reality
• Automotive & Transportation Services
• Cloud Computing
• Computer Software & Hardware
• Health Tech & Healthcare IT
• Internet of Things (IOT)
• Location-Based Services & GPS
• Medical Devices & Applications
• Semiconductor Devices & Manufacturing
• Smart Home & Connected Devices
• Telecommunication & Wireless Technologies
• Wearable Devices
• Web Services & Applications

For a more detailed description of these categories, please click here.

The submissions are also open to other technology areas of general interest to AST.  The complete list of technologies can be found by clicking here.

IP3 2023 is open for patent submissions starting July 17, 2023 through July 28, 2023.

• 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 are: Advertising & Content Distribution, Artificial Intelligence & Machine Learning, Augmented Reality/Virtual Reality, Automotive & Transportation Services, Cloud Computing, Computer Software & Hardware, Health Tech & Healthcare IT, Internet of Things (IOT), Location-Based Services & GPS, Medical Devices & Applications, Semiconductor Devices & Manufacturing, Smart Home & Connected Devices, Telecommunication & Wireless Technologies, Wearable Devices, and Web Services & Applications.
• By submitting patents to IP3 2023, 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 17, 2023; the sellers must notify AST if their submitted patents are sold or encumbered during this period. The Exclusivity Period will begin on September 18, 2023 until October 20, 2023. During this Exclusivity Period, the sellers agree not to sell, transfer, litigate or encumber any of the submitted assets. This obligation will continue after October 20, 2023, 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 20, 2023.

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 2023 Terms and Conditions and the Patent Assignment Agreement and 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.

1. 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.
2. 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 October 20, 2023.
  • Selection of 1 of the 15 Technology Categories of focused interest or other technology area of general interest to AST.
  • Patent List: Select the country/jurisdiction (the U.S., China, Europe (EP patent), France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea) and input the patent number. Then follow the prompts to add any additional information.
  • 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, evidence/indications of use charts, white papers, presentations or important informational materials you wish to include for further reviews.

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 do not consider submissions with only a pending publication or application.

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, these would need to be included in your submission as family members.  We do 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 do not consider submissions with only design assets.

If you have a patent number assigned by the time the portal closes on July 28, 2023, 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 2023 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. If there is an active license(s)/encumbrance on the portfolio, AST will request to review their existing license in case we would need to modify any part of our PAA with the Assignor.   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.).

 This program will only consider purchases. Please feel free to submit assets available for 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), 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.”  

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, this program will not consider payments over time.

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 2023 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 purchse by AST to our standard program at  https://www.ast.com/sell-to-ast/.

No. For additional details, please refer to the Submission Terms and Conditions.

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 ip32023@ast.com with your referenced AST Lot Number and your fixed price (it is recommended to review last year’s pricing data here). Please also attach a signed copy of the Terms and Conditions to your email.  

Our preference is to review new patent portfolios. If you are re-submitting the same portfolio, we suggest that you provide new supporting documents/marketing materials or important updates (e.g., an asset in the family has been allowed or issued).

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 2023 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 17, 2023).  From September 18, 2023, submitters must sell to IP3 if their price is met and they are notified of an intent to purchase by October 20, 2023.

The submission to IP3 is non-exclusive until September17, 2023.  You can continue offering your assets to other potential buyers until September 17, 2023 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 18, 2023, the Exclusivity Period will begin and you can no longer sell, transfer or encumber your submitted patents until the end of this Exclusivity Period (October 20, 2023 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 2023. 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 18, 2023 until October 20, 2023 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 2023.

Our goal is to let all submitters know by October 20, 2023 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 2023 will be making all purchases on behalf of AST’s Membership firms. 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 November 1, 2023:

1. 1. 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.
   2. Banking information sufficient to allow us to transfer the agreed-upon amount via ACH or wire transfer.
   3. A signed Patent Assignment Agreement with IP3, available for reference and download at ast.com/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 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) and 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 January 31, 2024.  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 2023 (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 20, 2023 if the decision is to not purchase your patents through our IP3 2023 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.

If you have additional questions, please email IP32023@ast.com.