Joint Patent Ownership Agreement Template for Malaysia

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Joint Patent Ownership Agreement

"I need a Joint Patent Ownership Agreement between our tech startup and the National University of Malaysia for a new AI-powered medical diagnostic tool, with particular focus on academic publication rights and commercialization revenue sharing."

Document background
In collaborative innovation scenarios where multiple entities contribute to a patentable invention, a Joint Patent Ownership Agreement becomes essential to clearly define the rights and obligations of each party. This document, governed by Malaysian law including the Patents Act 1983 and Patents Regulations 1986, establishes the framework for joint patent ownership, maintenance, and commercialization. It is particularly crucial when organizations jointly develop intellectual property and need to formalize their respective rights, responsibilities, and commercial interests. The agreement covers essential aspects such as ownership percentages, cost-sharing, commercialization rights, revenue distribution, and enforcement procedures, ensuring clear guidelines for managing the joint patent throughout its lifecycle.
Suggested Sections

1. Parties: Identification and details of all joint patent owners

2. Background: Context of the joint invention and relationship between the parties

3. Definitions: Key terms used throughout the agreement

4. Ownership Rights: Declaration of ownership percentages and rights of each party

5. Patent Protection and Maintenance: Responsibilities for patent filing, prosecution, and maintenance

6. Cost Sharing: Division of costs related to patent protection and maintenance

7. Commercialization Rights: Rights and procedures for commercial exploitation of the patent

8. Revenue Sharing: Distribution of income from patent exploitation

9. Enforcement Rights: Procedures for enforcing patent rights against infringers

10. Assignment and Licensing: Rules for assigning or licensing the patent to third parties

11. Confidentiality: Obligations to maintain confidentiality of patent-related information

12. Term and Termination: Duration of the agreement and termination provisions

13. Governing Law and Jurisdiction: Applicable law and jurisdiction for dispute resolution

14. General Provisions: Standard boilerplate clauses including notices, amendments, and severability

Optional Sections

1. Further Research and Development: Provisions for ongoing R&D related to the patent, used when parties plan continued collaborative development

2. International Patent Protection: Specific provisions for international patent filings, used when seeking protection in multiple jurisdictions

3. Employee Obligations: Requirements for employees handling patent-related information, used when parties have relevant staff

4. Competition Law Compliance: Specific provisions ensuring compliance with competition laws, used in cases of significant market impact

5. Technology Transfer: Provisions for sharing technical knowledge, used when implementation requires technical cooperation

6. Academic Rights: Special provisions for academic publications and research, used when academic institutions are involved

7. Government Rights: Provisions addressing government funding or rights, used when research involved public funding

Suggested Schedules

1. Patent Details: Technical description of the patent, including patent numbers and jurisdictions

2. Ownership Percentages: Detailed breakdown of ownership shares and calculations

3. Cost Allocation Framework: Detailed procedures for calculating and allocating costs

4. Revenue Distribution Mechanism: Detailed procedures for calculating and distributing revenue

5. Commercialization Procedures: Step-by-step processes for commercialization decisions

6. Contact Details: List of key contacts and authorized representatives for each party

7. Prior Rights: List of any existing rights or patents that may affect the joint patent

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 Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Research and Development

Healthcare

Electronics

Chemical Industry

Automotive

Aerospace

Energy

Telecommunications

Relevant Teams

Legal

Research and Development

Intellectual Property

Innovation

Business Development

Technology Transfer

Corporate Strategy

Licensing

Patents

Relevant Roles

Intellectual Property Manager

Legal Counsel

Research Director

Chief Technology Officer

Innovation Manager

Patent Attorney

Research Scientist

Business Development Manager

Licensing Manager

Chief Executive Officer

Chief Legal Officer

Research and Development Manager

Technology Transfer Officer

Commercial 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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