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Patent knowhow licence
I need a patent knowhow licence agreement that allows a Malaysian company to use specific patented technology for manufacturing purposes, with provisions for royalty payments, confidentiality obligations, and a term of 5 years with an option for renewal. The agreement should also include clauses for dispute resolution under Malaysian law.
What is a Patent knowhow licence?
A Patent knowhow licence is a legal agreement that lets companies share technical secrets and expertise alongside their patented inventions. It combines patent rights with practical knowledge that isn't publicly available - like manufacturing techniques, quality control methods, or specialized procedures that make the patent work better in real-world applications.
Under Malaysian intellectual property law, these licenses help local businesses access both formal patent rights and valuable trade secrets from their technology partners. They're particularly important in manufacturing, where knowing exactly how to implement a technology can be just as valuable as having permission to use it. Companies must register these agreements with MyIPO, Malaysia's intellectual property office.
When should you use a Patent knowhow licence?
Consider using a Patent knowhow licence when your company needs both patented technology and the practical expertise to implement it effectively. This is especially valuable in Malaysian manufacturing and technology sectors where technical knowledge goes beyond what's written in patent documents - like specific production methods, quality control processes, or specialized equipment settings.
These licenses become essential when entering joint ventures or technology transfer agreements with foreign partners. Malaysian businesses often need them to access international innovations while ensuring they get the complete technical package needed for successful implementation. They're particularly useful in industries like electronics, automotive manufacturing, and pharmaceutical production where precise technical knowledge determines success.
What are the different types of Patent knowhow licence?
- Exclusive Patent knowhow licences grant sole rights to use both the patent and technical knowledge in a specific geographic area - usually within Malaysia or ASEAN regions
- Non-exclusive licences allow multiple licensees to use the same patent and knowhow, common in manufacturing sectors
- Limited-field licences restrict usage to specific industries or applications while sharing detailed technical expertise
- Cross-border licences specifically address international technology transfer requirements under Malaysian IP laws
- Time-limited evaluation licences let companies test patented technology and associated knowhow before full commitment
Who should typically use a Patent knowhow licence?
- Technology Companies: Both Malaysian and international firms who own patents and valuable technical knowledge they want to license
- Manufacturing Businesses: Local companies seeking access to patented technologies and associated technical expertise for production
- IP Lawyers: Draft and negotiate Patent knowhow licence terms, ensure compliance with Malaysian IP laws
- Technical Experts: Help define and document the knowhow components, often involved in technology transfer
- MyIPO Officials: Review and register these agreements as part of Malaysia's IP regulatory framework
How do you write a Patent knowhow licence?
- Patent Details: Gather complete patent specifications, registration numbers, and territorial scope in Malaysia
- Technical Documentation: Compile detailed descriptions of the knowhow, manufacturing processes, and quality control procedures
- Commercial Terms: Define royalty rates, payment structures, and duration of the Patent knowhow licence
- Scope Definition: Specify permitted uses, geographic limitations, and any industry restrictions
- Compliance Check: Review MyIPO requirements for technology transfer agreements and registration procedures
- Confidentiality Measures: Detail protection methods for sensitive technical information and trade secrets
What should be included in a Patent knowhow licence?
- Patent Identification: Full details of the patent, including registration numbers and jurisdiction coverage in Malaysia
- Knowhow Description: Detailed specification of technical information, trade secrets, and implementation methods
- License Scope: Clear terms on exclusivity, permitted uses, and territorial limitations
- Confidentiality Terms: Specific provisions protecting sensitive technical information
- Royalty Structure: Payment terms, calculation methods, and reporting requirements
- Technology Transfer: Training obligations, technical support, and implementation assistance details
- Term and Termination: Duration, renewal options, and grounds for early termination
What's the difference between a Patent knowhow licence and a Patent assignment agreement?
A Patent knowhow licence differs significantly from a Patent assignment agreement in both scope and purpose. While both deal with patent rights, they serve fundamentally different business needs in Malaysia's IP landscape.
- Ownership Transfer: Patent assignment agreements permanently transfer ownership of the patent, while Patent knowhow licences only grant usage rights while maintaining original ownership
- Technical Knowledge: Patent knowhow licences include detailed technical information and trade secrets beyond the patent itself, which assignments typically don't cover
- Duration: Licences are typically time-limited with renewal options, while assignments are permanent transfers
- Ongoing Relationship: Knowhow licences create continuing obligations for technical support and knowledge sharing, unlike one-time assignment transactions
- Registration Requirements: MyIPO has different filing requirements for each, with assignments needing full ownership transfer recording
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