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Patent Assignment Agreement Template for Malaysia

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Key Requirements PROMPT example:

Patent Assignment Agreement

"I need a Patent Assignment Agreement for transferring five semiconductor manufacturing patents from TechCorp Malaysia Sdn Bhd to GlobalTech Industries Ltd, with the assignment to take effect from March 15, 2025, including provisions for technical knowledge transfer and ongoing inventor support."

Document background
The Patent Assignment Agreement is a crucial legal instrument used in Malaysia when transferring ownership of patent rights from one party to another. This document is essential in various business contexts, including corporate acquisitions, technology transfers, and research commercialization. It must comply with the Malaysian Patents Act 1983 and related regulations, ensuring proper registration with the Malaysian Intellectual Property Office. The agreement typically includes detailed descriptions of the patent(s), warranties about ownership and validity, consideration terms, and obligations for future cooperation. It's particularly important in situations involving company restructuring, technology company acquisitions, or commercialization of research institutions' intellectual property. The document serves as both a transfer instrument and a record of the transaction, providing security and clarity for both assignor and assignee.
Suggested Sections

1. Parties: Identification of the Assignor and Assignee, including full legal names, registration numbers (if companies), and registered addresses

2. Background: Context of the assignment, including brief description of the patent(s) and purpose of the assignment

3. Definitions: Definitions of key terms used throughout the agreement, including 'Patent Rights', 'Effective Date', 'Intellectual Property Rights'

4. Assignment: Core provision transferring all rights, title, and interest in the patent(s) from Assignor to Assignee

5. Consideration: Details of the payment or other consideration for the assignment

6. Assignor's Representations and Warranties: Warranties regarding ownership, right to assign, validity, non-infringement, and absence of encumbrances

7. Further Assurances: Obligation to execute additional documents and assist with transfer formalities

8. Governing Law and Jurisdiction: Specification of Malaysian law as governing law and choice of courts

9. Entire Agreement: Standard integration clause confirming the agreement represents the entire understanding between parties

10. Execution: Signature blocks and execution formalities

Optional Sections

1. Confidentiality: Required when sensitive technical information or trade secrets are involved in the patent transfer

2. Tax Provisions: Needed when specific tax arrangements or obligations need to be addressed

3. Related Know-How Transfer: Include when technical knowledge or trade secrets associated with the patent are also being transferred

4. Survival: Include when certain provisions need to survive termination of the agreement

5. Assignment of Right to Sue: Include when explicitly transferring right to sue for past infringements

6. Foreign Rights: Required when the patent has international registrations or pending applications

7. Employee/Inventor Obligations: Include when inventors or key employees have ongoing obligations post-assignment

Suggested Schedules

1. Schedule 1 - Patent Details: Detailed description of the patent(s) being assigned, including registration numbers, titles, and jurisdictions

2. Schedule 2 - Payment Terms: Detailed breakdown of consideration and payment schedule, if applicable

3. Schedule 3 - Existing Licenses: List of any existing licenses or encumbrances affecting the patent

4. Appendix A - Patent Certificates: Copies of official patent certificates and registration documents

5. Appendix B - Assignment Forms: Official patent assignment forms required by the Malaysian Intellectual Property Office

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok³ÉÈ˰æ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions




















Clauses























Relevant Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Electronics

Automotive

Chemical Industry

Healthcare

Telecommunications

Research & Development

Education & Academia

Industrial Engineering

Relevant Teams

Legal

Intellectual Property

Research & Development

Technology Transfer

Business Development

Corporate Strategy

Innovation

Commercialization

Patents

Technical Operations

Relevant Roles

Intellectual Property Lawyer

Patent Attorney

Research Director

Chief Technology Officer

Innovation Manager

Legal Counsel

Research Scientist

Patent Manager

Technology Transfer Officer

Business Development Manager

IP Portfolio Manager

Chief Legal Officer

R&D Director

Commercialization Manager

Technical Director

Industries





Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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