Patent Co Ownership Agreement Template for Hong Kong

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Key Requirements PROMPT example:

Patent Co Ownership Agreement

"I need a Patent Co-Ownership Agreement for a Hong Kong-registered semiconductor patent jointly owned between my technology company and our manufacturing partner, with equal ownership rights and clear provisions for commercialization revenue sharing."

Document background
The Patent Co-Ownership Agreement is essential when multiple parties share ownership rights in a patent registered in Hong Kong or other jurisdictions. This document becomes necessary in various scenarios, including joint research and development projects, corporate collaborations, or when patents are jointly acquired. The agreement, governed by Hong Kong law, particularly the Patents Ordinance (Cap. 514), provides a comprehensive framework for managing the relationship between co-owners. It addresses crucial aspects such as commercialization rights, maintenance responsibilities, revenue sharing, and decision-making protocols. The document is particularly important in Hong Kong's innovation-driven economy, where complex intellectual property arrangements between multiple stakeholders are common. It helps prevent potential disputes by clearly defining each party's rights and obligations while ensuring compliance with local patent and contract laws.
Suggested Sections

1. Parties: Identification of all co-owners of the patent, including their legal names, addresses, and registration details if companies

2. Background: Context of the joint patent ownership, including how the co-ownership arose and brief description of the patent

3. Definitions: Definitions of key terms used throughout the agreement, including technical terms specific to the patent

4. Patent Details: Specific details of the patent(s) covered by the agreement, including registration numbers and jurisdictions

5. Ownership Rights: Clear statement of ownership percentages and the nature of the co-ownership relationship

6. Rights and Obligations: Core rights and responsibilities of each co-owner, including rights to use, license, and exploit the patent

7. Decision Making: Procedures for making decisions regarding the patent, including required majorities for different types of decisions

8. Commercialization: Terms governing the commercial exploitation of the patent, including revenue sharing arrangements

9. Patent Maintenance: Responsibilities for maintaining the patent, including payment of renewal fees and defending the patent

10. Confidentiality: Obligations regarding confidential information related to the patent

11. Assignment and Transfer: Rules governing the transfer of ownership interests, including any pre-emption rights

12. Dispute Resolution: Procedures for resolving disputes between co-owners

13. Term and Termination: Duration of the agreement and circumstances under which it can be terminated

14. General Provisions: Standard contractual provisions including governing law, notices, and entire agreement

Optional Sections

1. Research and Development: Provisions governing ongoing R&D activities related to the patent, used when co-owners plan to continue development

2. Improvements: Treatment of improvements to the patented technology, included when future developments are anticipated

3. International Rights: Specific provisions for international patent rights, used when the patent has multi-jurisdictional coverage

4. Competition Law Compliance: Specific provisions ensuring compliance with competition laws, important for commercially sensitive arrangements

5. Academic Rights: Special provisions for academic institutions as co-owners, including rights to publish and use for research

6. Employee Obligations: Provisions regarding employees' access to and use of the patent, important for corporate co-owners

7. Exit Mechanisms: Detailed procedures for co-owners to exit the agreement, including valuation mechanisms

8. Grant-Back Licenses: Provisions for licensing improvements back to other co-owners, relevant for ongoing development scenarios

Suggested Schedules

1. Patent Specifications: Detailed technical specifications and drawings of the patented invention

2. Existing Licenses: List and details of any existing licenses or agreements affecting the patent

3. Revenue Sharing Formula: Detailed calculations and mechanisms for sharing revenue from patent exploitation

4. Decision Making Matrix: Detailed matrix showing required approvals for different types of decisions

5. Maintenance Schedule: Schedule of patent maintenance fees and deadlines

6. Authorized Representatives: List of authorized representatives for each co-owner and their authority levels

7. Valuation Methodology: Agreed methodology for valuing patent rights for transfer purposes

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

Relevant legal definitions
Clauses
Relevant Industries

Technology

Biotechnology

Pharmaceuticals

Manufacturing

Research & Development

Electronics

Chemical Industry

Medical Devices

Telecommunications

Artificial Intelligence

Green Technology

Semiconductor Industry

Relevant Teams

Legal

Intellectual Property

Research and Development

Technology Transfer

Innovation

Commercial

Business Development

Patents

Scientific Affairs

Executive Leadership

Corporate Development

Licensing

Relevant Roles

Chief Technology Officer

Intellectual Property Manager

Patent Attorney

Legal Counsel

Research Director

Innovation Manager

Commercial Director

Chief Legal Officer

Technology Transfer Officer

R&D Manager

Business Development Director

Chief Executive Officer

Chief Scientific Officer

Licensing Manager

Patent Administrator

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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