The Assignment Of Invention Agreement is a crucial legal instrument used in Malaysia when transferring ownership rights of an invention from one party to another. It is commonly utilized in various scenarios, including employee inventions being transferred to employers, acquisition of intellectual property assets, or technology transfer between organizations. The document must comply with Malaysian Patents Act 1983 and Contracts Act 1950 requirements, ensuring proper documentation of the invention, clear transfer terms, and necessary warranties. This agreement typically includes detailed technical descriptions, patent information, consideration details, and obligations for future cooperation in patent prosecution and enforcement. It's particularly important in corporate R&D, academic research commercialization, and technology industry transactions where intellectual property forms a valuable asset.
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1. Parties: Identification of the Assignor (inventor/owner) and Assignee with complete legal names and addresses
2. Background: Context of the invention, relationship between parties, and purpose of the assignment
3. Definitions: Key terms including 'Invention', 'Intellectual Property Rights', 'Effective Date', and other relevant terminology
4. Assignment and Transfer: Core provision transferring all rights, title, and interest in the invention from Assignor to Assignee
5. Consideration: Details of payment or other consideration for the assignment
6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, and non-infringement
7. Further Assurances: Obligation to execute additional documents and assist with patent applications
8. Governing Law: Specification of Malaysian law as governing law and jurisdiction
9. General Provisions: Standard clauses including notices, entire agreement, and severability
1. Existing Licenses and Encumbrances: Required when the invention is subject to existing licenses or other encumbrances
2. Confidentiality: Include when sensitive technical information needs protection
3. Foreign Rights: Necessary when the invention has international patent applications or potential
4. Improvements: Include when future improvements to the invention should be covered
5. Registration: Required when specific steps for patent office registration need to be detailed
6. Survival: Include when certain obligations need to survive the assignment
7. Tax Provisions: Required when there are significant tax implications to address
1. Schedule A - Invention Description: Detailed technical description of the invention, including any patent applications or grants
2. Schedule B - Patent Documentation: Copies of patent applications, grants, or other relevant IP documentation
3. Schedule C - Payment Terms: Detailed breakdown of consideration and payment schedule if applicable
4. Schedule D - Required Assignment Documents: List of additional documents needed for patent office recordal
5. Appendix 1 - Technical Drawings: Technical drawings, diagrams, or specifications of the invention
6. Appendix 2 - Prior Art Disclosure: List of known prior art or related patents
Relevant legal definitions
Clauses
Relevant Industries
Technology
Pharmaceuticals
Biotechnology
Manufacturing
Research & Development
Electronics
Software Development
Chemical Industry
Automotive
Aerospace
Medical Devices
Clean Energy
Telecommunications
Agricultural Technology
Industrial Design
Relevant Teams
Legal
Research and Development
Intellectual Property
Innovation
Product Development
Executive Leadership
Technology Transfer Office
Patent Administration
Corporate Development
Scientific Affairs
Relevant Roles
Patent Attorney
Intellectual Property Lawyer
Research Scientist
R&D Manager
Chief Technology Officer
Innovation Director
Legal Counsel
Technology Transfer Manager
Research Director
Intellectual Property Manager
Product Development Manager
Chief Executive Officer
Chief Legal Officer
Research Engineer
Technology Licensing Officer
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