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Assignment And License Of Patent

Assignment And License Of Patent Template for Hong Kong

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Key Requirements PROMPT example:

Assignment And License Of Patent

"I need an Assignment and License of Patent agreement for transferring ownership of our biotech patent portfolio to a pharmaceutical company while retaining manufacturing rights in Hong Kong through an exclusive license back, with the transfer to be completed by March 2025."

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Document background
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.
Suggested Sections

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

Optional Sections

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

Suggested Schedules

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

Authors

Alex Denne

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

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Clauses
Assignment
License Grant
Consideration
Payment Terms
Royalties
Representations and Warranties
Confidentiality
Intellectual Property Rights
Technical Support
Quality Control
Improvements
Registration
Further Assurance
Term and Termination
Force Majeure
Infringement
Indemnification
Insurance
Regulatory Compliance
Export Control
Competition Law Compliance
Sublicensing
Patent Marking
Record Keeping
Audit Rights
Dispute Resolution
Governing Law
Assignment and Transfer
Notices
Entire Agreement
Severability
Waiver
Amendment
Third Party Rights
Costs
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

Industries
Patents Ordinance (Cap. 514): The primary legislation governing patent rights in Hong Kong, including provisions for patent assignments, licenses, and registration requirements
Patents (General) Rules (Cap. 514C): Subsidiary legislation providing detailed procedures for patent-related matters, including registration of assignments and licenses
Competition Ordinance (Cap. 619): Relevant for ensuring license terms don't contain anti-competitive provisions or abuse of market power
Contract Law (Common Law): General principles of contract law applying to the formation and enforcement of the assignment and license agreement
Registration of Patents Ordinance: Governs the registration requirements for patent rights and transactions in Hong Kong
Stamp Duty Ordinance (Cap. 117): May be relevant for determining any stamp duty requirements on the assignment document
Personal Data (Privacy) Ordinance (Cap. 486): Relevant for handling any personal data included in the agreement and registration documents
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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