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License To Use Intellectual Property

License To Use Intellectual Property Template for Malaysia

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Key Requirements PROMPT example:

License To Use Intellectual Property

"I need a License to Use Intellectual Property agreement for my software company to license our AI-powered analytics platform to Malaysian businesses, with an exclusive territory grant and quarterly royalty payments starting from March 2025."

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Document background
The License To Use Intellectual Property agreement is essential for businesses and individuals seeking to legally utilize intellectual property rights in Malaysia. This document is particularly relevant when one party (the licensor) wishes to grant another party (the licensee) the right to use specific intellectual property while retaining ownership. It is structured to comply with Malaysian IP laws and regulations, including the Patents Act 1983, Trade Marks Act 2019, and Copyright Act 1987. The agreement covers crucial elements such as license scope, territory restrictions, royalty structures, quality control measures, and termination conditions. It's commonly used in technology transfers, software licensing, brand licensing, and other scenarios where IP rights need to be formally licensed while ensuring proper protection under Malaysian jurisdiction.
Suggested Sections

1. Parties: Identification of the licensor and licensee, including full legal names, registration numbers, and registered addresses

2. Background: Context of the agreement, description of the intellectual property, and the parties' intention to enter into a licensing arrangement

3. Definitions: Detailed definitions of key terms used throughout the agreement

4. Grant of License: Specific rights being granted, including scope, territory, and whether exclusive or non-exclusive

5. License Fee and Payment Terms: Details of licensing fees, royalties, payment schedule, and payment methods

6. Term and Termination: Duration of the license and circumstances under which it can be terminated

7. Intellectual Property Rights: Confirmation of ownership and protection of the licensed IP

8. Use of Licensed IP: Permitted uses, restrictions, and quality control requirements

9. Warranties and Representations: Standard warranties regarding IP ownership and right to license

10. Confidentiality: Protection of confidential information exchanged during the license period

11. Governing Law and Jurisdiction: Specification of Malaysian law as governing law and jurisdiction for disputes

12. General Provisions: Standard boilerplate clauses including notices, entire agreement, and severability

Optional Sections

1. Sub-licensing Rights: Include when the licensee is permitted to sub-license the IP to third parties

2. Improvements: Include when dealing with potential improvements to the IP and ownership/licensing of such improvements

3. Source Code Escrow: Include for software licenses where source code access may be required under certain conditions

4. Export Control: Include when the IP may be subject to international export control regulations

5. Training and Support: Include when the licensor will provide technical support or training

6. Insurance: Include when specific insurance requirements are needed for the licensed IP use

7. Change of Control: Include when license rights need to be addressed in case of ownership changes

8. Audit Rights: Include when licensor requires rights to audit licensee's use of IP or royalty calculations

Suggested Schedules

1. Schedule 1 - Licensed Intellectual Property: Detailed description of the IP being licensed, including registration numbers where applicable

2. Schedule 2 - License Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms

3. Schedule 3 - Technical Specifications: Technical details and specifications of the licensed IP

4. Schedule 4 - Quality Control Standards: Standards and specifications for the use of the licensed IP

5. Schedule 5 - Approved Sub-licensees: List of pre-approved sub-licensees if applicable

6. Appendix A - Usage Guidelines: Detailed guidelines for proper use of the licensed IP

7. Appendix B - Support and Maintenance Terms: Details of any support or maintenance services included in the license

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
Relevant Industries

Technology

Software Development

Manufacturing

Research and Development

Education

Healthcare

Pharmaceuticals

Entertainment

Media

Telecommunications

Biotechnology

Consumer Goods

Industrial Design

Fashion

Automotive

Relevant Teams

Legal

Intellectual Property

Research and Development

Business Development

Commercial

Compliance

Technology

Innovation

Product Development

Contracts and Licensing

Relevant Roles

Intellectual Property Manager

Legal Counsel

Chief Technology Officer

Research Director

Licensing Manager

Business Development Manager

Innovation Manager

Patent Attorney

Commercial Director

Chief Legal Officer

Technology Transfer Officer

R&D Manager

Product Development Manager

Compliance Officer

Contract Manager

Industries
Contracts Act 1950: The primary legislation governing contractual relationships in Malaysia, setting out rules for formation, validity, and enforcement of contracts including licensing agreements
Patents Act 1983: Regulates patent rights in Malaysia, including provisions for licensing of patent rights and the requirements for valid patent licenses
Trade Marks Act 2019: Governs trademark protection and licensing in Malaysia, including provisions for trademark licensing and use
Copyright Act 1987: Protects copyright works and regulates copyright licensing, including provisions for copyright assignment and licensing
Industrial Designs Act 1996: Governs the protection and licensing of industrial designs in Malaysia
Competition Act 2010: Ensures that IP licensing agreements do not contain anti-competitive provisions or abuse market position
Electronic Commerce Act 2006: Relevant for electronic execution of licensing agreements and electronic communications related to the license
Stamp Act 1949: Requires certain agreements, including IP licenses, to be stamped to be admissible as evidence in court
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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