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Patent Cross License for Malaysia

Patent Cross License Template for Malaysia

A comprehensive legal agreement governed by Malaysian law that enables two or more parties to mutually license their patent portfolios to each other. This document facilitates the exchange of patent rights between organizations, typically in related technological fields, allowing each party to utilize the other's patented innovations while maintaining their respective ownership rights. The agreement includes detailed terms for license scope, technical specifications, commercial terms, and compliance with Malaysian patent and competition laws.

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Patent Cross License

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What is a Patent Cross License?

The Patent Cross License agreement is utilized when two or more organizations wish to leverage each other's patent portfolios for mutual benefit while operating under Malaysian jurisdiction. This document becomes necessary when companies identify overlapping technological interests or wish to avoid potential patent disputes through cooperative licensing. The agreement typically includes detailed specifications of licensed patents, usage rights, technical implementation guidelines, and compliance requirements with Malaysian intellectual property laws. It's particularly relevant in situations where companies have complementary patent portfolios or operate in adjacent technological spaces, providing a framework for legal and technical collaboration while protecting each party's intellectual property rights.

What sections should be included in a Patent Cross License?

1. Parties: Identification of the contracting parties, including their full legal names, registration numbers, and registered addresses

2. Background: Context of the agreement, including brief description of each party's patent portfolio and business relationship

3. Definitions: Detailed definitions of key terms used throughout the agreement, including technical terms, patent-specific terminology, and agreement-specific concepts

4. Grant of License: Mutual grant of patent rights, including scope, field of use, and territory

5. License Restrictions: Specific limitations on the use of licensed patents and restrictions on sublicensing

6. Payment Terms: Financial arrangements, including any royalties, lump-sum payments, or payment schedules

7. Representations and Warranties: Parties' assertions regarding patent ownership, validity, and right to license

8. Confidentiality: Provisions for protecting confidential information exchanged during the agreement

9. Term and Termination: Duration of the agreement and circumstances for early termination

10. Compliance with Laws: Obligations to comply with applicable laws and regulations

11. Dispute Resolution: Procedures for resolving disputes, including jurisdiction and governing law

12. General Provisions: Standard boilerplate clauses including notices, assignment, and amendment procedures

What sections are optional to include in a Patent Cross License?

1. Most Favored Licensee: Ensures each party receives terms no less favorable than those offered to other licensees

2. Patent Prosecution and Maintenance: Obligations regarding maintaining and prosecuting licensed patents

3. Technology Transfer: Terms for technical assistance and knowledge transfer, if required

4. Patent Marking: Requirements for marking products with patent numbers

5. Grant-Back Provisions: Terms for licensing improvements or new patents based on the licensed technology

6. Export Control: Special provisions for compliance with export control regulations

7. Change of Control: Provisions addressing changes in ownership of either party

8. Patent Challenge: Consequences of challenging the validity of licensed patents

What schedules should be included in a Patent Cross License?

1. Schedule A - Licensed Patents: Comprehensive list of patents and patent applications covered by the agreement

2. Schedule B - Technical Specifications: Detailed technical information about the licensed patents and their implementation

3. Schedule C - Royalty Calculations: Detailed methodology for calculating any royalties or other payments

4. Schedule D - Reporting Requirements: Format and timing of required reports on patent usage and royalty calculations

5. Appendix 1 - Patent Family Trees: Visual representation of patent families and their relationships

6. Appendix 2 - Approved Sublicensees: List of pre-approved sublicensees, if applicable

7. Appendix 3 - Technical Contact Points: List of technical representatives from each party responsible for implementation

Authors

Alex Denne

Head of Growth (Open Source Law) @ Ƶ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

Malaysia

Publisher

Ƶ

Document Type

License Agreement

Sector

IP

Cost

Free to use
Relevant legal definitions








































Clauses

































Relevant Industries

Technology

Telecommunications

Semiconductor Manufacturing

Electronics

Automotive

Biotechnology

Pharmaceuticals

Industrial Manufacturing

Software Development

Research and Development

Consumer Electronics

Relevant Teams

Legal

Intellectual Property

Research and Development

Technology Transfer

Business Development

Patent Operations

Technical Compliance

Corporate Strategy

Innovation

Relevant Roles

Chief Technology Officer

Intellectual Property Manager

Patent Attorney

Legal Counsel

Licensing Manager

Research and Development Director

Innovation Manager

Chief Legal Officer

Technology Transfer Officer

Business Development Director

Patent Portfolio Manager

Intellectual Property Strategist

Industries






Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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