Proprietary Inventions And Assignment Agreement Template for Malaysia

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Key Requirements PROMPT example:

Proprietary Inventions And Assignment Agreement

"I need a Proprietary Inventions and Assignment Agreement for my Malaysian technology startup that specializes in AI development, to be used for new software engineers and researchers starting from January 2025, with specific provisions for international patent protection and open-source software contributions."

Document background
The Proprietary Inventions and Assignment Agreement is a crucial document for organizations operating in Malaysia that engage in innovative work or research and development activities. This agreement is designed to protect a company's intellectual property rights by ensuring that all inventions, innovations, and intellectual property created by employees or contractors during their engagement are properly assigned to the company. It complies with Malaysian legislation, including the Patents Act 1983, Contracts Act 1950, and relevant employment laws. The document is typically implemented at the beginning of employment or engagement and continues throughout the relationship, covering aspects such as invention disclosure requirements, assignment procedures, confidentiality obligations, and cooperation in patent applications. It's particularly important for technology companies, research institutions, and any organization investing in innovation and development activities.
Suggested Sections

1. Parties: Identification of the employer/company and the employee/contractor who is assigning their rights

2. Background: Context of the agreement, employment relationship, and purpose of the invention assignment

3. Definitions: Key terms including 'Inventions', 'Intellectual Property Rights', 'Proprietary Information', 'Prior Inventions', etc.

4. Scope of Employment and Services: Description of employee's role and responsibilities related to innovative work

5. Disclosure of Inventions: Employee's obligation to promptly disclose all inventions to the employer

6. Assignment of Inventions: Transfer of rights from employee to employer for inventions developed during employment

7. Proprietary Information: Definition and protection of confidential information and trade secrets

8. Assistance and Cooperation: Employee's obligations to help secure and protect IP rights, including patent applications

9. Return of Company Materials: Requirements for returning all materials and information upon termination

10. Non-Competition and Non-Solicitation: Restrictions on competing activities and soliciting other employees or customers

11. Term and Termination: Duration of the agreement and conditions for termination

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

13. General Provisions: Standard clauses including severability, entire agreement, and amendments

Optional Sections

1. Prior Inventions Exclusion: Section for listing pre-existing inventions that are excluded from the agreement

2. Revenue Sharing: Terms for sharing revenue from commercialized inventions, used when offering inventors additional incentives

3. International Rights: Specific provisions for international patent filings and protection, used when international operations are anticipated

4. Academic and Publication Rights: Terms for allowing publication or academic use of inventions, relevant for research-oriented positions

5. Third Party Collaboration: Provisions for handling inventions developed in collaboration with external parties

6. Moral Rights Waiver: Explicit waiver of moral rights in jurisdictions where applicable

7. Alternative Dispute Resolution: Procedures for mediation or arbitration before court proceedings

Suggested Schedules

1. Schedule A - Prior Inventions: List of pre-existing inventions excluded from the agreement

2. Schedule B - Invention Disclosure Form: Standard form for documenting and disclosing new inventions

3. Schedule C - Assignment Deed Template: Template for executing formal assignments of specific inventions

4. Schedule D - Company IP Policies: Reference to company's intellectual property policies and procedures

5. Schedule E - Revenue Sharing Framework: Details of any applicable revenue sharing arrangements

6. Appendix 1 - Witness Requirements: Requirements for witnessing and notarizing invention assignments under Malaysian law

7. Appendix 2 - Patent Filing Procedures: Internal procedures for patent applications and prosecutions

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

Biotechnology

Pharmaceutical

Manufacturing

Research and Development

Software Development

Electronics

Telecommunications

Healthcare

Engineering

Chemical Industry

Automotive

Aerospace

Medical Devices

Artificial Intelligence

Clean Technology

Relevant Teams

Legal

Human Resources

Research and Development

Engineering

Product Development

Innovation

Technical Operations

Intellectual Property

Laboratory Operations

Design

Scientific Research

Information Technology

Quality Assurance

Relevant Roles

Research Scientist

Software Engineer

Product Developer

R&D Manager

Technical Director

Chief Technology Officer

Innovation Manager

Laboratory Technician

Design Engineer

Systems Architect

Biotechnology Researcher

Industrial Designer

AI Developer

Chemical Engineer

Principal Investigator

Research Fellow

Technical Consultant

Product Manager

Chief Scientific Officer

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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