Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Tuesday, May 12, 2015

Google: sell us your US patents

By Lester Miller, Patent Attorney and Senior Associate

A fortnight-long window just opened to allow patent owners to sell their US patents directly to Google. The window is part of a program called the Patent Purchase Promotion, which is an experiment by Google that invites patentees to nominate a dollar value for a patent at which it will be offered for sale. There will be no negotiation.

Google says in its announcement that it would like to cut out intermediaries and make the patent marketplace more efficient. The conditions include a non-transferable licence back to the owner at no cost, so this experiment may appeal to clients who seek additional traction for their patented concept without losing the ability to commercially exploit the invention themselves in the US marketplace. Only one patent is allowed per offer, but a person or company may offer as many patents as they like under separate offers.

Google has about US$63 billion in cash on hand, and its more than 51,000 patents and patent applications extend across a wide array of technology areas, so it may be time to dig your Rembrandts out of the attic:

• renewable energy: data centres powered and cooled by sea-water;
• implantable devices;
• transport: tunable vibration dampers; and
• apps: ordering ahead with a smartphone

There are some further conditions on this experimental marketplace, including that the company or individual will need to eventually supply relevant US tax ID numbers; a waiver that the offer is not notification of a patented technology for some alternative purpose such as infringement litigation; notification that they are legally able to deal with the patent unencumbered; and that the seller agrees to join any terminally-disclaimed patents with the offered patent.

Google notes that it has no idea how much interest this experiment will generate, and it stresses that any interested potential seller should consult an attorney before proceeding.

Having said all that, if this is all too experimental for you, or there is some other reason for your patent not suiting the promotion conditions, Google has another option to receive patent submissions for sale or otherwise.

The Patent Purchase Promotion window closes at 11:59pm, US Pacific Daylight Time on 22 May 2015.

Let us know if we can help.

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