Frequently Asked Questions
Q: The concept of a “patent library” from which companies could “check out” assets has been tried before. What makes Provenance different?
A: There are three main differences that distinguish Provenance. First is the quality of our patents. The Provenance patents that are selected as “assertion-ready” are exceptional and of a quality rarely offered for sale or “lease.” They have been exhaustively scrutinized by technical staffs, lawyers, and patent specialists from the more than 100,000 patents owned by Nokia. Previous attempts to implement a “patent library” concept lacked such exceptional assets.
Second is the innovative new business model that Provenance developed. Making the highest quality patents available to operating companies for defensive purposes is our only business, rather than a secondary business in which the best patents are reserved by others for their primary business. And because our novel model allows companies to only “lease” the rights they need, we can provide exclusive, enforceable multiple rights to the same patent to multiple licensees, dramatically lowering the cost for each patent right obtained. At $100k per slice, the Provenance assets are much more attractively priced than previous efforts.
Third, and perhaps most importantly, Provenance will stand with our licensees as a named party if there ever is a need to litigate these patents. This obviates the concerns regarding standing that have plagued previous attempts that have typically relied on assignment/re-assignment models that introduced substantial complexity and compromised the certainty of legal standing.
Q: What is the cost of a slice?
A: Each slice is priced at $100k per year. This provides the exclusive right to sublicense one complete patent family to one named company for one year.
Q: What if I want multiple slices?
A: A client may purchase as many slices as desired, whether to assert one patent family against multiple named companies or slices from multiple patent families. Each slice remains $100k per year.
Q: Is there a discount for multiple slices?
A: If a client wants to purchase all of the available slices to a single family, it may certainly do so. The maximum we will charge a client for all of the available slices in a family (subject to any preexisting slice grants) is $100k per slice not to exceed $500k per year.
Q: Are there any restrictions on how I can use a slice?
A: The Provenance model is meant to be defensive, so a slice may only be used for defensive purposes (which could include counter-assertions, counter-claims, or declaratory judgment actions). A Provenance client should not purchase a slice to use offensively, and Provenance will only provide rights to operating companies.
Q: For any assets that might be divested, are you willing to sell to Non-Practicing Entities?
A: Our divestitures will be fully competitive and transparent. Any asset that we may decide to sell will be publicly identified for sale for at least two weeks and will be posted on our website. Our process is open, competitive, and available to all bidders. Quinn Pacific, LLC, will act as our exclusive broker. While our preference is to sell to operating companies or defensive entities, we will accept the highest cash offer. This process provides an opportunity for every entity to decide whether it has interest in acquiring patents, and the ability to do so.
Q: Are there any assets that you will not sell?
A: No. Any asset in the Provenance portfolio that is not producing revenue will be subject to sale. We will review all patent families in the portfolio — including the “Assertion Ready” assets — every six months to make that determination. Of course, any sale of assets will be subject to preexisting slice grants.
Q: I am concerned about confidentiality. How does Provenance ensure the confidentiality of companies seeking to make use of the Provenance patents? If I search TrustedPatents, will my queries be captured?
Q: I see my company listed under “Potentially Relevant Companies”. Are you putting us on notice of infringement?
A: Absolutely not. This only means that you might be providing products or services that would be of relevance to the technology of the patent in question. We expressly disclaim notice of infringement, as reflected by the following statement that accompanies each of our Patent Maps: “This document is not an assertion or notice of patent infringement, and is not intended to identify a particular product or person.”
Q: Do you have plans to assert the patents you own?
A: No. We intend for Provenance to remain an entirely defensive entity. However, as noted above, we reserve the right to divest any assets that do not generate revenues, and we cannot guarantee that a purchaser will not ultimately assert them.
Q: What is Provenance’s relationship with Nokia? Does Nokia have control over Provenance?
A: The initial assets in Provenance’s portfolio were acquired from Nokia. Provenance will share a portion of its top-line revenues with Nokia (as well as with any companies that in the future may decide to sell assets to Provenance). Provenance is controlled by its Board of Directors.
Q: If we sell assets to Provenance, how will we be paid?
A: For each patent family that we choose to buy, we will pay you 0.15% of our top-line revenue on a quarterly basis, subject to a total cap to all new sellers of 35% of our total revenue. For purposes of this calculation, top-line revenue includes revenue from all sources, not just the revenue associated with the assets we purchased from you.
Q: What type of assets is Provenance looking for?
A: The ideal Provenance asset is not exhaustively licensed, and is truly the best of the best — ready to be used in litigation if needed. We will give preference to patents in technology areas for which there is market demand and which have significant remaining life.
Q: If I have taken a slice, and the patent is later challenged and invalidated, will I get a refund?
A: Provenance is very confident that our assertion-ready assets are of exceptional quality and would likely survive a challenge. In the unlikely event of an invalidation, we would not charge for any further use of the slice but would not issue a credit for any past payments.
Q: What happens if a patent to which I have a slice becomes the subject of an IPR?
A: If an IPR is filed against a Provenance asset, any client holding a license right to that patent will have the option of conducting the defense of the IPR at its own cost. If no licensee elects to undertake the defense of the IPR, then Provenance may conduct the defense of the IPR itself. If a licensee assumes responsibility for the IPR, all license fees related to that patent will be suspended for the licensee funding the IPR during the pendency of the IPR and for two years thereafter.
Q: Can a Provenance slice license be used to counter an intellectual property dispute that is not patent related, for example a trademark or copyright case?
A: Unlike our core business that is focused on providing patent rights to our clients to respond to patent assertions (whether litigation has been initiated or not), in cases where we are approached to provide patent rights in response to assertion of non-patent intellectual property, we would consider this on a case-by-case basis only when litigation has commenced.
Q: If an originating entity sells assets to an NPE who then uses the assets to assert infringement claims against us, can we use a Provenance slice license to make a defensive patent claim against the originating entity?
A: Our general view is that the industry benefits immensely from sales processes that are open and transparent. Accordingly, in a case where the originating entity offers assets for sale to the industry through an open and transparent process, our view is that any claims that might mature out of a successful bid by an NPE are part of the risk calculus that the industry participants undertake in choosing whether to buy the assets or “roll the dice,” and would therefore not be the basis for making Provenance assets available for counter-assertion against the originating entity in question.
On the other hand, an originating entity that divests assets directly to an NPE without first affording the industry a fair opportunity to consider taking a license or buying the assets is effectively making a direct assertion of the assets. For this type of scenario, we would be willing to make Provenance assets available on a case-by-case basis to enable a “counter-claim” action against the de facto aggressor. Our client would need to represent and warrant that they were not provided the opportunity to purchase or obtain a license in advance of the sale to the NPE.