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Technology License Agreement Template for Malaysia

A comprehensive legal agreement governed by Malaysian law that establishes the terms and conditions under which a technology owner (licensor) grants rights to another party (licensee) to use, implement, or commercialize specific technological intellectual property. The agreement covers essential elements including license scope, payment terms, IP rights protection, confidentiality obligations, and compliance with Malaysian regulatory requirements. It incorporates specific provisions required under Malaysian intellectual property and contract law, while addressing technical implementation, support, and maintenance requirements.

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What is a Technology License Agreement?

The Technology License Agreement serves as a crucial legal framework for technology transfer and commercialization in Malaysia, ensuring compliance with local laws including the Patents Act 1983, Copyright Act 1987, and Contracts Act 1950. This document is essential when one party wishes to grant another party rights to use their proprietary technology, software, patents, or technical know-how while maintaining ownership of the intellectual property. It's particularly important in scenarios involving cross-border technology transfer, software licensing, or industrial technology implementation. The agreement includes detailed provisions for protecting intellectual property rights, establishing payment structures, defining implementation requirements, and ensuring proper technology support and maintenance. It addresses specific Malaysian regulatory requirements while providing flexibility to accommodate various types of technology transfers and commercial arrangements.

What sections should be included in a Technology License Agreement?

1. Parties: Identification of the licensor and licensee, including full legal names, registration numbers, and registered addresses

2. Background: Context of the agreement, brief description of the technology, and parties' intentions

3. Definitions: Detailed definitions of technical terms, defined terms, and key concepts used throughout the agreement

4. License Grant: Scope of the license, including territory, exclusivity/non-exclusivity, and permitted uses

5. License Fees and Payment Terms: Details of licensing fees, royalties, payment schedule, and payment methods

6. Intellectual Property Rights: Ownership of IP, protection measures, and handling of improvements or modifications

7. Confidentiality: Protection of confidential information, trade secrets, and technical know-how

8. Term and Termination: Duration of the agreement, renewal terms, and termination conditions

9. Warranties and Representations: Warranties regarding IP ownership, technology functionality, and non-infringement

10. Limitation of Liability: Limitations on liability and exclusions of certain types of damages

11. Governing Law and Jurisdiction: Specification of Malaysian law as governing law and jurisdiction for disputes

12. General Provisions: Standard boilerplate clauses including notices, assignment, and entire agreement

What sections are optional to include in a Technology License Agreement?

1. Technical Support and Maintenance: Include when ongoing technical support or maintenance services are part of the license

2. Training: Include when the licensor will provide training to licensee's personnel

3. Quality Control: Include when the licensed technology must meet specific quality standards or requirements

4. Source Code Escrow: Include for software licenses where source code access may be required under certain conditions

5. Hardware Requirements: Include when the technology requires specific hardware or equipment specifications

6. Data Protection: Include when the technology involves processing personal data

7. Export Control: Include when the technology is subject to export control regulations

8. Localization Requirements: Include when the technology needs to be adapted for local Malaysian market

9. Performance Metrics: Include when specific performance standards or SLAs are required

10. Audit Rights: Include when the licensor needs rights to audit the licensee's use of the technology

What schedules should be included in a Technology License Agreement?

1. Schedule 1 - Technical Specifications: Detailed technical specifications and functionality of the licensed technology

2. Schedule 2 - Licensed Patents and IP: List of specific patents, copyrights, and other IP covered by the license

3. Schedule 3 - Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms

4. Schedule 4 - Service Levels: Technical support and maintenance service levels, if applicable

5. Schedule 5 - Implementation Plan: Timeline and milestones for technology implementation

6. Schedule 6 - Approved Sub-licensees: List of approved sub-licensees if sub-licensing is permitted

7. Schedule 7 - Territory Definition: Detailed description of licensed territory and any restrictions

8. Appendix A - Testing and Acceptance Criteria: Criteria for acceptance testing of the technology

9. Appendix B - Security Requirements: Security standards and requirements for technology implementation

10. Appendix C - Training Program: Details of training programs and materials to be provided

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok成人版 | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents

Jurisdiction

Malaysia

Document Type

Licensing Agreement

Sector

IP

Cost

Free to use

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