The Proprietary Inventions and Assignment Agreement is a crucial document for organizations operating in Malaysia that engage in innovative work or research and development activities. This agreement is designed to protect a company's intellectual property rights by ensuring that all inventions, innovations, and intellectual property created by employees or contractors during their engagement are properly assigned to the company. It complies with Malaysian legislation, including the Patents Act 1983, Contracts Act 1950, and relevant employment laws. The document is typically implemented at the beginning of employment or engagement and continues throughout the relationship, covering aspects such as invention disclosure requirements, assignment procedures, confidentiality obligations, and cooperation in patent applications. It's particularly important for technology companies, research institutions, and any organization investing in innovation and development activities.
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1. Parties: Identification of the employer/company and the employee/contractor who is assigning their rights
2. Background: Context of the agreement, employment relationship, and purpose of the invention assignment
3. Definitions: Key terms including 'Inventions', 'Intellectual Property Rights', 'Proprietary Information', 'Prior Inventions', etc.
4. Scope of Employment and Services: Description of employee's role and responsibilities related to innovative work
5. Disclosure of Inventions: Employee's obligation to promptly disclose all inventions to the employer
6. Assignment of Inventions: Transfer of rights from employee to employer for inventions developed during employment
7. Proprietary Information: Definition and protection of confidential information and trade secrets
8. Assistance and Cooperation: Employee's obligations to help secure and protect IP rights, including patent applications
9. Return of Company Materials: Requirements for returning all materials and information upon termination
10. Non-Competition and Non-Solicitation: Restrictions on competing activities and soliciting other employees or customers
11. Term and Termination: Duration of the agreement and conditions for termination
12. Governing Law and Jurisdiction: Specification of Malaysian law as governing law and jurisdiction for disputes
13. General Provisions: Standard clauses including severability, entire agreement, and amendments
1. Prior Inventions Exclusion: Section for listing pre-existing inventions that are excluded from the agreement
2. Revenue Sharing: Terms for sharing revenue from commercialized inventions, used when offering inventors additional incentives
3. International Rights: Specific provisions for international patent filings and protection, used when international operations are anticipated
4. Academic and Publication Rights: Terms for allowing publication or academic use of inventions, relevant for research-oriented positions
5. Third Party Collaboration: Provisions for handling inventions developed in collaboration with external parties
6. Moral Rights Waiver: Explicit waiver of moral rights in jurisdictions where applicable
7. Alternative Dispute Resolution: Procedures for mediation or arbitration before court proceedings
1. Schedule A - Prior Inventions: List of pre-existing inventions excluded from the agreement
2. Schedule B - Invention Disclosure Form: Standard form for documenting and disclosing new inventions
3. Schedule C - Assignment Deed Template: Template for executing formal assignments of specific inventions
4. Schedule D - Company IP Policies: Reference to company's intellectual property policies and procedures
5. Schedule E - Revenue Sharing Framework: Details of any applicable revenue sharing arrangements
6. Appendix 1 - Witness Requirements: Requirements for witnessing and notarizing invention assignments under Malaysian law
7. Appendix 2 - Patent Filing Procedures: Internal procedures for patent applications and prosecutions
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