Google announced on April 27, 2015 a new program for patent
owners to sell their patents to the ubiquitous search engine
giant. The motivation for the program is to give Google first
dibs on patents that might otherwise be sold to patent
trolls. Allen Lo, Google's deputy general counsel for
patents, says that when patents are sold to patent trolls "bad
things happen, like lawsuits, lots of wasted effort, and generally
The program, called the Patent Purchase Promotion, provides patent
owners looking to sell their patents with a portal to submit an
offer listing a patent and a price for Google to consider. As
Allen Lo put it, "We invite you to sell us your
The Patent Purchase Promotion will accept submission during an
experimental two week run from May 8 to 22, 2015. Google says
that participants will be informed of Google's further interest
in, or intent to pass on their patent submission by June 26,
Of course, the program is not without limitations and fine
print. Participants must provide a US Tax ID (for
individuals), a W-9 (for US-based companies), or a W-8BEN-E (for
foreign companies) to participate. Only U.S. patents are
eligible, and only one patent per submission. The
program's FAQ explains that by submitting an offer, the
participant agrees to sell the patent to Google at the offered
price should Google wish to transact. Therefore, if a
participant makes multiple submissions to sell a family of related
U.S. patents, it will be available for Google to pick-and-choose
from the patents in that family.
The program also includes a uniform
Patent Purchase Agreement which sets the terms of any patent
sales made under the program. Effectively, the Agreement
transfers all rights to the patent, existing licenses under the
patent, and causes of action relating to the patent to
Google. The Agreement also grants the seller an irrevocable
non-exclusive, non-transferrable, non-sublicensable, worldwide,
fully paid-up license under the Patent to develop, make, use, and
sell any product, service, method, or process. The terms of
the Agreement appear to be non-negotiable and therefore
participants should consult a lawyer to review the terms before
The patents that Google buys will join Google's portfolio of
patents to be used by Google as they please. Although the
program aims to provide patent owners looking to sell with a more
socially responsible buyer than patent trolls, Google has offered
no assurances that the patents purchased will not be used for
litigation in the future.
More information on the Patent Purchase Promotion can be found
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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