IP3 2024 FAQs

The Industry Patent Purchase Program (IP3), established in 2016, is an innovative fixed price, fixed term, collaborative patent purchase and licensing initiative. Given the program’s success and the trend toward patent licensing (where the patent owner continues to own their patent) compared to acquisitions, we invite all patent owners to submit their patents for this year’s IP3 with fixed prices for sale and/or group licensingSubmissions will be accepted for a two-week period from June 10 through June 21, 2024 via our IP3 website portal, at www.ast.com/IP3.

This annual event allows patent owners to submit their patents directly to a platform where AST’s current and prospective member companies, which include industry leaders such as: Cisco, Google, IBM, Intel, Meta, Microsoft, Oracle, Philips, Salesforce, ServiceNow, Snap, Sony, Spotify, Uber and Verizon, among others (each an “IP3 Participator”) can review and potentially choose to acquire or license these patents.

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, Patent Assignment Agreement or Sublicense Rights 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 or Sublicense Rights Agreement between AST and the patent owner following the acceptance of an offer. For additional information about AST’s standard program, please visit our standard program FAQ.

AST’s IP3 2024 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 August 17, 2024).  From August 18, 2024, submitters must sell or license to IP3 if their price is met and they are notified of an intent to purchase or license by September 20, 2024.

 

 IP3 2024 welcomes patents across various fields, with preference focused on the following 15 high-technology categories:

  • 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 click here. 

We are also open to patents from other technologies that may be of general interest to AST and our members.  A detailed list of these categories can be found at: http://www.ast.com/list-of-the-technology-categories-in-which-ast-has-interest/.

IP3 2024 is open for patent submissions starting June 10, 2024 through June 21, 2024.

  • Patent holders may submit one or multiple patent families per submission for sale and/or license at fixed prices. The submissions can be listed for sale only, license only, or for sale or license. In the event that the submitters select to submit their patents for sale or license, they must provide a fixed price for sale and a fixed price for a group license. 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 2024, patent owners agree to this year’s IP3 Terms and Conditions. The submissions for sale will be non-exclusive to the IP3 Participators from the date of their submission until August 17, 2024. During this time, the sellers must notify AST if their submitted patents are sold or encumbered. In the case of submissions for license, no notice is required for a grant of a non-exclusive license. 
  • During the Exclusivity Period from August 18 through September 20, 2024, the sellers agree not to sell, transfer, litigate or encumber any of the submitted assets. This obligation will continue after September 20, 2024, if AST/IP3 notifies the submitters of its tentative intent to purchase the submitted assets. In the case of submissions for license rights, the granting of non-exclusive licenses during the Exclusivity Period is allowed.

    All submissions will be reviewed as received and all submitters will be notified of their patent status by September 20, 2024. 

Yes, by participating you will need to agree to IP3’s Terms and Conditions.  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.

Further, in the case of offers for sale, you must notify AST if your patents are sold or encumbered during the non-exclusive period, which ends on August 17, 2024.  And during the Exclusivity Period from August 18 through September 20, 2024, sellers agree not to sell, transfer, litigate, or otherwise encumber the submitted patents.

Before moving forward with a submission, we advise you to review the IP3 2024 Terms and Conditions, the IP3 2024 Sublicense Rights Agreement (SRA) and the Patent Assignment Agreement (PAA) with an attorney.

We will take reasonable steps to keep all submissions confidential.  Obviously, if we are able to transact with you, we have the right to record the change of ownership or licenses with relevant Patent Offices in the world in the ordinary course of business.  Also, please note we reserve the right to publicly discuss generalized information about IP3 (e.g., number of total submissions, breakdowns by technology area, etc.).  The provisions regarding confidentiality are specified in Paragraph 3 of the IP3 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 or Sublicense Rights 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 or license.  
  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:
    1. Submitter’s Name:  This is the name of the contact person. This should either be the individual patent owner(s) or an authorized representative, if owned by a company/entity, or a broker/intermediary who represents the patent owner with the authority to sell or license the patent(s). 
    2. Patent Owner’s Name:  Name of the company/entity or individual(s) who is the current owner/assignee of the patent(s).  
    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 representative authorizing the submission 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 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.
    5. Unique Name for Your Offering:  This is your brief patent reference name or patent title.
    6. Type of Offering: Select if the deal is available for a) Sale and/or License, b) Sale only, c) License only (U.S. dollars only):
      1. Depending on the type of offering selected, provide a fixed price (in U.S. Dollars) for sale, license or both options. 
      2. Fixed price for sale is the price that you will sell your patent families (one or more) included in your submission to IP3. 
      3. Fixed price for license is a one-time fee for all the Sublicense Agreements that IP3 enters into with Members for your patent families (one or more) included in your submissions to IP3.  For the avoidance of doubt, provide a fixed price for a group license, as IP3 may sublicense up to 35 Members as part of the IP3 program and during the Sublicensing Term. 
    7. Selection of 1 of the 15 Technology Categories of focused interest or a secondary technology area of general interest to AST.
    8. 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.
    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, exemplary players in the field of invention, evidence/indications of use charts, white papers, presentations or important informational materials you wish to include for further reviews.

Only those with full authority to sell or license the asset(s), either as the owner or as someone empowered by the owner with the authority to sell or license the asset(s) may submit.  This may include individuals, entities, such as companies and universities, or brokers or law firms with proper authorization.  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 Tax ID Number (TIN) or Social Security Number (SSN). U.S. companies will have to supply a current year 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.

Yes, you may submit one or multiple related patent families per submission, although we prefer single families per submission. Unrelated families should be submitted separately, and you are free to make multiple submissions. Please note the fixed price will be for all patents and their families per submission.  

Yes, IP3 will purchase or license 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 or license 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.

We only consider pending applications if they are part of a family with at least one active granted patent in our recognized jurisdictions: US, China, Europe, France, Germany, the United Kingdom, Japan, Taiwan, or the Republic of Korea. We do not consider submissions with only a pending publication or application or international WO/PCT application.  

We do not consider submissions with only expired assets. 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 design 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. 

If you have a patent number assigned by the time the portal closes on June 21, 2024, 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. 

No. All of our Members will have the opportunity to exercise a license if they choose.

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. 

 Yes.  However, we will not purchase assets with a security interest or UCC lien unless the interest or lien is released and cleared before or as part of a purchase by IP3 (at your cost and handled in a timely manner soon after notification of a tentative purchase).  If the security interest or lien cannot be cleared, the submission for sale should not be made, or made as a license only submission.

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 (PAA). If there is an active license(s)/encumbrance on the portfolio, AST will request to review the existing license in case we would need to modify any part of our PAA with the Assignor.  You will also need to provide us with a list of any enforcement activities relating to the patent (e.g., any active enforcement proceedings in any U.S. or foreign court, any Inter Partes Reviews (IPR) or any other active proceeding through the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office), and a list of active disputes involving the patents (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.” 

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 or SRA. This program requires the use of the Patent Assignment Agreement and the Sublicense Rights Agreement provided at ast.com/ip3.

Patent sellers who have missed the IP3 2024 deadline may still submit patents for purchase and/or license by AST to our standard program at https://ast.com/sell-to-ast/.

You may submit active issued patents for purchase and/or license 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 request our team to transfer your portfolio from our standard program to IP3 as long as the patent list is the same and your listing is still active/available. To transfer your listing to IP3, please email ip3@ast.com with your referenced AST Lot Number and your fixed price for either sale, license or sale and license along with your signed and dated copy of the Terms and Conditions downloadable at IP3.
Our preference is to review new patent portfolios. If you are re-submitting the same portfolio for sale or license, 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).

The submissions for sale to IP3 are non-exclusive until August 17, 2024.  You can continue offering your assets to other potential buyers until August 17, 2024 and per the Terms and Conditions you will need to notify IP3 if your submitted patents are sold or encumbered during this period.  On August 18, 2024, 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 20, 2024 or later if we contact you with a tentative notice to move forward with a transaction to acquire your submitted patents). For additional details, please refer to the Submission Terms and Conditions.

No. In the case of a submission for license only, the granting of other non-exclusive licenses is allowed, including during the Exclusivity Period (from August 18, 2024 until September 20, 2024) or later if we contact you with the intent to license your submitted patents. 

Your patent broker may represent you in your submission to IP3 2024. We accept the submissions from the patent owners or their brokers/intermediaries. 

Our goal is to let all submitters know by September 20, 2024 if their submissions are tentatively accepted to move to the next step for purchase or license. With respect to sellers whom AST contacts about purchasing or licensing their patents, please understand such notice is tentative and will require the seller to supply additional information to AST. 

 If we contact you with the intent to purchase or license your submitted patents, IP3 2024 will be making the purchases or licensing 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 contact you with the intent to license your submitted patents, IP3 2024 will enter into a Sublicense Rights Agreement with the patent owner to sublicense the submitted patents to AST Members. Only after the Sublicensing Term is over, we will send a notification to you which summarizes the sublicenses granted and the sublicensees.  

If we tentatively select your patent(s) for purchase or license, we will contact you with additional next steps.  As part of those next steps, you must provide the following information by October 2, 2024: 

  1. Relevant tax-related information. U.S. companies and individuals with either a Taxpayer Identification Number (TIN) or 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. For purchase submissions:  A 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.).
  5. For license submissions:  A Sublicense Rights Agreement with IP3, available for reference and download at ast.com/IP3.

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 or Sublicense Rights 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 or Sublicense Rights Agreement to you by December 31, 2024.  Barring any setbacks, IP3 will make payments within 30 business days thereafter.

The Sublicensing Term will continue for six (6) months after the Effective Date of the Sublicense Rights Agreement. The duration of the license is perpetual until the expiration of the last to expire of the licensed patents.  Within thirty (30) days following the effective date of the agreement, IP3 shall pay to the licensor a one-time fixed price for a group license. IP3 may sublicense up to 35 Members during the sublicensing term. For additional details, please refer to the SRA.

If we enter into a Sublicense Rights Agreement, you cannot sell your patents until after the Sublicensing Term of the SRA has expired.

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 2024 (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.

AST does not require the Licensor to maintain their patent(s).

If AST decides not to purchase or license your patent(s) through our IP3 2024 program, we will email you by September 20, 2024 inviting 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 automatically be transferred and 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 IP3@ast.com.

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