The Assignment Of Inventions Agreement is a crucial document used when transferring ownership of inventions and related intellectual property rights in Hong Kong. It is commonly used in situations where inventors or companies need to transfer their rights to inventions, whether as part of employment relationships, company acquisitions, or commercial transactions. The agreement must comply with Hong Kong's Patents Ordinance (Cap. 514) and related legislation, ensuring proper documentation of the transfer of all associated rights, including patents, know-how, and technical information. This document is essential for protecting both the assignor's and assignee's interests, establishing clear ownership rights, and facilitating proper registration of patents and other intellectual property rights with Hong Kong authorities.
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1. Parties: Identifies the assignor (inventor/owner) and assignee, including full legal names and addresses
2. Background: Explains the context of the invention assignment and the parties' relationship
3. Definitions: Defines key terms including 'Invention', 'Intellectual Property Rights', 'Documentation', and other relevant terms
4. Assignment: Core clause transferring ownership of the invention and all related rights from assignor to assignee
5. Scope of Assignment: Details what is being transferred, including patents, know-how, and related rights
6. Consideration: Specifies the payment or other consideration for the assignment
7. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, and non-infringement
8. Further Assurance: Obligation to execute additional documents and assist with IP registration
9. Confidentiality: Obligations regarding confidential information related to the invention
10. Governing Law and Jurisdiction: Specifies Hong Kong law and jurisdiction for disputes
1. Future Inventions: Include when the agreement covers inventions yet to be created
2. Multiple Inventors: Required when multiple inventors are involved in the invention
3. Employee Inventions: Include when the inventor is an employee and employment law considerations apply
4. Registration Costs: Include when specifying responsibility for patent registration costs
5. Improvements: Include when covering future improvements to the assigned invention
6. Royalties: Include if the assignment includes ongoing royalty payments
7. Non-Competition: Include when restricting assignor from competing activities
8. Dispute Resolution: Include when parties want specific dispute resolution procedures beyond court litigation
1. Schedule 1 - Invention Description: Detailed technical description of the invention being assigned
2. Schedule 2 - Patent Applications: List of any existing patent applications or patents related to the invention
3. Schedule 3 - Related Rights: List of related intellectual property rights, know-how, and technical information
4. Schedule 4 - Consideration Details: Detailed payment terms, including any installments or royalty calculations
5. Schedule 5 - Existing Licenses: List of any existing licenses or third-party rights affecting the invention
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