The Assignment Of Invention Agreement is a critical legal instrument used in Hong Kong for transferring ownership rights in inventions from one party to another. This document is essential when inventors or companies need to transfer their rights in an invention, whether as part of a commercial transaction, employment arrangement, or research collaboration. The agreement must comply with Hong Kong's Patents Ordinance (Cap. 514) and related legislation, ensuring proper documentation of the transfer of all intellectual property rights associated with the invention. It typically includes detailed descriptions of the invention, any existing patent applications or grants, warranties of ownership and originality, and provisions for future cooperation in patent prosecution. This document is particularly important in corporate R&D settings, university technology transfers, and commercial transactions involving intellectual property assets.
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1. Parties: Identifies and defines the Assignor and Assignee with full legal names and addresses
2. Background: Explains the context of the invention and the purpose of the assignment
3. Definitions: Defines key terms including 'Invention', 'Intellectual Property Rights', 'Assignment Date', and other relevant terms
4. Assignment: Core clause transferring all rights, title, and interest in the invention from Assignor to Assignee
5. Consideration: States the payment or other consideration for the assignment
6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, non-infringement, and no prior assignments
7. Further Assurances: Assignor's commitment to assist with additional documentation or actions needed to perfect the assignment
8. Confidentiality: Obligations regarding confidential information related to the invention
9. Governing Law and Jurisdiction: Specifies Hong Kong law as governing law and Hong Kong courts' jurisdiction
10. Entire Agreement: Standard integration clause confirming the agreement represents the complete understanding between parties
1. Employee Inventions: Include when the invention was created in the course of employment, addressing employer rights and employee obligations
2. Multiple Inventors: Include when there are multiple inventors assigning their rights
3. Patent Applications: Include when specific provisions are needed regarding existing or future patent applications
4. Royalties: Include if the assignment includes ongoing royalty payments
5. Non-Competition: Include when restricting Assignor's future activities in related fields
6. Tax Provisions: Include when there are specific tax implications that need to be addressed
7. Moral Rights: Include when dealing with inventions that may have associated moral rights
1. Schedule 1 - Description of the Invention: Detailed technical description of the invention, including any drawings, specifications, and related documentation
2. Schedule 2 - Existing Patent Applications: List of any existing patent applications or patents related to the invention
3. Schedule 3 - Payment Terms: Detailed breakdown of consideration, including any installment payments or royalty calculations
4. Schedule 4 - Related Intellectual Property: List of any related intellectual property rights included in the assignment
5. Appendix A - Inventor's Declaration: Formal declaration by the inventor(s) confirming the details of the invention and assignment
6. Appendix B - Technical Documentation: Additional technical documents, drawings, or specifications related to the invention
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