The Assignment Of Patent Rights Agreement is a crucial legal instrument used when transferring ownership of patent rights in Hong Kong. This document is essential when companies or individuals wish to sell, transfer, or restructure their intellectual property assets. It operates within Hong Kong's sophisticated intellectual property framework, which combines elements of common law with specific statutory provisions under the Patents Ordinance (Cap. 514). The agreement is commonly used in corporate acquisitions, technology transfers, company restructuring, or strategic IP portfolio management. It must address specific requirements of Hong Kong patent law while ensuring the effective transfer of all associated rights, including the right to sue for past infringements and collect royalties. The document typically includes comprehensive details about the patent(s), consideration, warranties, and any existing licenses or encumbrances.
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1. Parties: Identifies and provides full legal details of the Assignor (current patent owner) and Assignee (receiving party)
2. Background: Explains the context of the assignment, identifies the patent(s) being transferred, and states the parties' intention to transfer ownership
3. Definitions and Interpretation: Defines key terms used in the agreement including 'Patent Rights', 'Intellectual Property Rights', 'Effective Date', and interpretation rules
4. Assignment: Core provision transferring all rights, title, and interest in the patent(s) from Assignor to Assignee
5. Consideration: Specifies the payment or other consideration for the assignment
6. Assignor's Warranties: Warranties regarding ownership, validity, non-infringement, and ability to assign the patent rights
7. Further Assurance: Obligation to execute additional documents and take necessary steps to perfect the assignment
8. Confidentiality: Provisions regarding confidential information related to the patent(s) and assignment
9. General Provisions: Standard clauses including governing law, jurisdiction, entire agreement, and severability
1. Technical Assistance: Include when the Assignor agrees to provide technical support or knowledge transfer to the Assignee
2. Royalties: Required if the assignment includes ongoing royalty payments rather than a single payment
3. Related Rights: Include when transferring associated rights such as improvements, modifications, or related know-how
4. Tax Provisions: Include specific tax arrangements when significant tax implications exist
5. Existing Licenses: Include when there are existing licenses or encumbrances that affect the patent rights
1. Schedule 1 - Patent Details: Detailed description of the patent(s) including registration numbers, jurisdictions, and filing dates
2. Schedule 2 - Assignment Consideration: Detailed payment terms, including any installments or royalty calculations
3. Schedule 3 - Existing Licenses and Encumbrances: List of any existing licenses, security interests, or other encumbrances affecting the patent rights
4. Schedule 4 - Technical Documentation: List of technical documents, drawings, and other materials to be transferred with the patent rights
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