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 bad karma.”
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 patents”.
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, 2015.
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 proceeding.
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 here.