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1. Parties: Identifies and provides full details of the transferor and transferee
2. Background: Sets out the context of the agreement, including the existence and ownership of the patent(s) to be transferred
3. Definitions: Defines key terms used throughout the agreement
4. Transfer of Patent Rights: Details the specific patent rights being transferred and the nature of the transfer
5. Consideration: Specifies the payment or other consideration for the transfer
6. Completion: Sets out the completion date and mechanics of the transfer
7. Transferor's Warranties: Warranties regarding ownership, validity, and non-infringement of the patent
8. Further Assurance: Obligation to execute additional documents and take necessary steps to perfect the transfer
9. Confidentiality: Provisions regarding confidential information related to the patent
10. Tax and Expenses: Allocation of tax liabilities and transaction expenses
11. Notices: Procedures for giving notices under the agreement
12. General Provisions: Standard boilerplate clauses including governing law, jurisdiction, etc.
1. Transitional Services: Used when the transferor needs to provide technical support or knowledge transfer services post-completion
2. License Back: Include when the transferor requires continued use of the patent in certain fields or territories
3. Related Rights: When additional IP rights (such as know-how or improvements) are included in the transfer
4. Competition Law Compliance: Required for transfers that may have competition law implications
5. Employee and Consultant Obligations: Include when there are specific obligations regarding employees or consultants who worked on the patent
6. Patent Prosecution: Include when dealing with pending patent applications
7. Foreign Registration Rights: Used when the patent has international registration potential
1. Patent Details: Detailed description of the patent(s) including registration numbers, jurisdictions, and expiry dates
2. Payment Schedule: If the consideration is to be paid in installments or includes milestone payments
3. Form of Patent Assignment: The formal assignment document required for patent office registration
4. Technical Documentation: List of technical documents to be transferred with the patent
5. Existing Licenses: Details of any existing licenses or encumbrances affecting the patent
6. Required Local Forms: Any specific forms required by the Hong Kong Patents Registry
7. Completion Obligations: Detailed list of documents and actions required at completion
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Research & Development
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Industrial Engineering
Legal
Intellectual Property
Research & Development
Technology Transfer
Corporate Development
Innovation
Business Development
Compliance
Technical Documentation
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Chief Technology Officer
Intellectual Property Manager
Patent Attorney
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