The Assignment And License Of Patent agreement is a sophisticated legal instrument used in Hong Kong when companies or individuals wish to transfer patent ownership while maintaining or establishing specific usage rights through licensing arrangements. This document is particularly relevant in scenarios involving corporate restructuring, technology transfers, joint ventures, or strategic partnerships. It must comply with Hong Kong's Patents Ordinance (Cap. 514) and related regulations, requiring careful attention to both assignment formalities and licensing terms. The agreement typically includes detailed specifications of the patent rights being transferred, licensing conditions, territorial restrictions, financial terms, and various commercial provisions. It's essential for protecting intellectual property rights while facilitating commercial exploitation of the patented technology in the Hong Kong market and potentially internationally.
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1. Parties: Identification of the assignor/licensor and assignee/licensee with full legal names and addresses
2. Background: Context of the agreement, including patent ownership history and commercial relationship between parties
3. Definitions: Definitions of key terms used throughout the agreement, including Patent Rights, Territory, Field of Use, etc.
4. Assignment: Clear statement of patent rights transfer, including worldwide rights, rights to sue for past infringement, etc.
5. License Grant: Specific terms of the license including scope, territory, and field of use restrictions
6. Consideration: Financial terms including assignment price, license fees, royalties, and payment terms
7. Representations and Warranties: Warranties regarding patent ownership, validity, and non-infringement
8. Further Assurance: Obligations to execute additional documents and assist with patent office recordings
9. Confidentiality: Provisions for protecting confidential information exchanged under the agreement
10. Term and Termination: Duration of the license and circumstances allowing termination
11. Governing Law and Jurisdiction: Specification of Hong Kong law and jurisdiction
12. Execution: Signature blocks and execution formalities
1. Improvements: Provisions dealing with rights to improvements made to the patented technology, used when ongoing development is expected
2. Sublicensing Rights: Terms governing the licensee's right to sublicense, included when sublicensing is permitted
3. Quality Control: Standards for products manufactured under the license, included for manufacturing licenses
4. Regulatory Compliance: Obligations regarding regulatory approvals, included for regulated industries
5. Patent Marking: Requirements for marking products with patent numbers, included for manufacturing licenses
6. Export Control: Export restriction provisions, included when international commerce is involved
7. Technology Transfer: Provisions for technical assistance and knowledge transfer, included when technical support is part of the deal
8. Competition Law Compliance: Specific provisions ensuring compliance with competition laws, included for licenses with market impact
1. Schedule 1 - Patent Rights: Detailed list of patents and patent applications being assigned and licensed
2. Schedule 2 - Licensed Products: Description of products covered by the license
3. Schedule 3 - Technical Information: List of know-how and technical documentation to be transferred
4. Schedule 4 - Royalty Calculations: Detailed methodology for calculating royalties
5. Schedule 5 - Form of Recordal: Template documents for recording the assignment with patent offices
6. Appendix A - Patent Assignment Form: Standard form for patent assignment required by Hong Kong IPD
7. Appendix B - Quality Standards: Detailed quality requirements for licensed products if applicable
Relevant legal definitions
Clauses
Relevant Industries
Technology
Pharmaceuticals
Biotechnology
Manufacturing
Electronics
Telecommunications
Automotive
Healthcare
Chemical Industry
Consumer Products
Software Development
Industrial Engineering
Research & Development
Clean Technology
Medical Devices
Relevant Teams
Legal
Intellectual Property
Research & Development
Business Development
Technology Transfer
Innovation
Corporate Development
Licensing
Patents
Commercial
Relevant Roles
Chief Technology Officer
Intellectual Property Counsel
Patent Attorney
Legal Counsel
Research Director
Innovation Manager
Technology Transfer Officer
Business Development Director
Chief Executive Officer
Chief Legal Officer
Head of Research & Development
Licensing Manager
Patent Portfolio Manager
Commercial Director
Chief Scientific Officer
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