An Invention Assignment Agreement is a crucial legal document used in Malaysia when organizations need to secure ownership rights to inventions created by their employees, researchers, or contractors. This agreement is particularly important in research-intensive industries and technology companies where intellectual property protection is vital. The document complies with Malaysian Patents Act 1983 and related legislation, establishing clear ownership rights, transfer mechanisms, and obligations regarding inventions. It typically includes details about invention disclosure requirements, patent application processes, confidentiality obligations, and the scope of rights being transferred. This agreement is essential for protecting company investments in research and development while ensuring proper compensation and recognition for inventors.
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1. Parties: Identifies and provides details of the assignor (inventor/employee) and assignee (typically employer/company)
2. Background: Establishes the context of the agreement, relationship between parties, and purpose of the assignment
3. Definitions: Defines key terms including 'Invention', 'Intellectual Property Rights', 'Confidential Information', and other relevant terms
4. Scope of Assignment: Defines what types of inventions are covered by the agreement, including future inventions
5. Assignment and Transfer: Core provisions detailing the legal transfer of rights from assignor to assignee
6. Disclosure Obligations: Requirements for inventor to disclose all relevant inventions to the company
7. Assistance and Cooperation: Inventor's obligations to assist with patent applications and related processes
8. Consideration: Details of any payment or consideration for the assignment
9. Representations and Warranties: Assignor's warranties regarding ownership, originality, and right to assign
10. Confidentiality: Obligations to maintain confidentiality of inventions and related information
11. Governing Law: Specifies Malaysian law as governing law and relevant jurisdiction
12. General Provisions: Standard clauses including notices, amendments, and severability
1. Prior Inventions: Section excluding specific pre-existing inventions from the assignment, used when inventor has existing IP
2. Third Party Rights: Addresses situations involving third party rights or joint inventions
3. Non-Competition: Restrictions on competitive activities, used when needed to protect company interests
4. Academic and Publication Rights: Used for academic or research institutions to address publication rights
5. International Rights: Special provisions for international patent filings and protection
6. Royalty Provisions: Used when ongoing royalty payments are part of the arrangement
7. Shop Rights: Addresses employer's right to use inventions without ownership, used in specific employment contexts
1. Schedule of Existing Inventions: List of prior inventions excluded from the assignment
2. Schedule of Assigned Patents: Specific list of patents or patent applications being assigned
3. Invention Disclosure Form: Template form for disclosing new inventions
4. Patent Assignment Form: Standard form for recording assignment with patent office
5. Compensation Schedule: Details of any payment structure or royalty calculations
6. Compliance Requirements: List of specific compliance requirements under Malaysian law
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