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Joint Patent Ownership Agreement

Joint Patent Ownership Agreement Template for Indonesia

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Key Requirements PROMPT example:

Joint Patent Ownership Agreement

"I need a Joint Patent Ownership Agreement for a collaboration between my pharmaceutical company and a local Indonesian university, where we'll jointly own a new drug delivery system patent and share commercialization rights, with the university retaining rights for academic research."

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Document background
A Joint Patent Ownership Agreement becomes necessary when multiple parties contribute to an invention or acquire joint rights to a patent through various circumstances such as collaborative research, joint development projects, or commercial transactions. This document is particularly crucial in the Indonesian legal context, where it must comply with Law No. 13 of 2016 on Patents and related regulations. It is commonly used in research collaborations, industry-academic partnerships, and joint venture arrangements where intellectual property rights are shared. The agreement covers essential aspects such as ownership percentages, rights to use and license the patent, responsibility for maintenance fees, sharing of commercialization revenues, and procedures for patent enforcement. It should be tailored to meet specific requirements of Indonesian technology transfer regulations and foreign investment laws when international parties are involved.
Suggested Sections

1. Parties: Identification of all parties to the agreement, including their legal status and registered addresses

2. Background: Context of the agreement, including how the joint ownership arose and the parties' general intentions

3. Definitions and Interpretation: Definitions of key terms used in the agreement and rules of interpretation

4. Patent Rights: Description of the patent(s), including registration details and territorial scope

5. Ownership Structure: Specification of ownership percentages and rights of each party

6. Management of Patent Rights: Procedures for making decisions about patent prosecution, maintenance, and enforcement

7. Exploitation and Commercialization: Rights and obligations regarding the commercial use of the patent

8. Cost Sharing: Allocation of costs related to patent prosecution, maintenance, and enforcement

9. Revenue Sharing: Distribution of revenues from patent exploitation

10. Enforcement of Rights: Procedures for dealing with patent infringement and enforcement actions

11. Confidentiality: Obligations regarding confidential information sharing and protection

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

13. General Provisions: Standard legal provisions including governing law, dispute resolution, and notices

Optional Sections

1. Technology Transfer: Required when the agreement involves transfer of technical knowledge beyond the patent rights

2. Foreign Filing Rights: Include when parties anticipate international patent filings

3. Improvements: Include when parties expect to develop improvements to the patented technology

4. Right of First Refusal: Include when parties want the option to purchase the other party's share

5. Academic Rights: Include when one party is an academic institution requiring rights for research and teaching

6. Government Rights: Required when the patent resulted from government-funded research

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

Suggested Schedules

1. Schedule 1 - Patent Details: Detailed description of the patent(s), including registration numbers, filing dates, and jurisdictions

2. Schedule 2 - Commercial Terms: Specific commercial arrangements, including revenue sharing percentages and payment terms

3. Schedule 3 - Management Procedures: Detailed procedures for decision-making and management of the patent rights

4. Schedule 4 - Existing Licenses: List of any existing licenses or encumbrances on the patent

5. Schedule 5 - Authorized Representatives: List of designated representatives from each party for patent management

6. Appendix A - Technical Description: Technical details of the patented invention

7. Appendix B - Development History: Documentation of the development of the patented invention and contributions of each party

Authors

Alex Denne

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

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Relevant legal definitions
Agreement
Affiliate
Background IP
Confidential Information
Effective Date
Exploitation
Field of Use
Improvements
Intellectual Property Rights
Invention
Joint IP Committee
Licensed Products
Net Revenue
Patent
Patent Application
Patent Costs
Patent Family
Patent Rights
Patent Term
Prosecution
Qualified Expenditure
Related Rights
Revenue
Subsidiary
Territory
Third Party
Valid Claim
Working Day
Background
Commercial Use
Commercialization
Development
Direct Costs
Enforcement Action
Export Control Laws
Fair Market Value
Freedom to Operate
Government Authority
Improvement Patent
Indirect Costs
Indonesian Patent Office
Infringement
Know-How
License
Licensed Technology
Material Breach
Net Profits
Patent Maintenance
Prior Art
Priority Date
Research Purpose
Royalties
Technology
Term
Trade Secrets
Clauses
Parties
Recitals
Definitions
Patent Rights
Ownership
Patent Prosecution
Patent Maintenance
Cost Sharing
Revenue Sharing
Exploitation Rights
Licensing Rights
Technology Transfer
Confidentiality
Competition Compliance
Decision Making
Patent Enforcement
Infringement Defense
Representations and Warranties
Term and Termination
Assignment and Transfer
Force Majeure
Governing Law
Dispute Resolution
Notices
Amendment
Severability
Entire Agreement
Further Assurance
Third Party Rights
Waiver
Costs
Export Control
Data Protection
Tax
Foreign Filing Rights
Improvements
Right of First Refusal
Non-Competition
Indemnification
Insurance
Records and Audits
Publication Rights
Regulatory Compliance
Relevant Industries

Pharmaceuticals

Biotechnology

Information Technology

Manufacturing

Electronics

Telecommunications

Chemical Industry

Automotive

Energy

Medical Devices

Agricultural Technology

Aerospace

Materials Science

Clean Technology

Consumer Electronics

Relevant Teams

Legal

Intellectual Property

Research & Development

Innovation

Business Development

Technology Transfer

Corporate Strategy

Commercial

Licensing

Patent Administration

Scientific Affairs

Relevant Roles

Intellectual Property Manager

Legal Counsel

Patent Attorney

Research Director

Chief Technology Officer

Innovation Manager

Business Development Manager

Technology Transfer Officer

Research & Development Director

Chief Legal Officer

Licensing Manager

Patent Portfolio Manager

Chief Executive Officer

Chief Scientific Officer

Commercial Director

Industries
Law No. 13 of 2016 on Patents: The primary Indonesian patent law that governs patent rights, registration, ownership, transfer, and licensing of patents. Essential for defining the scope of patent rights and ownership provisions.
Indonesian Civil Code (KUHPerdata): Provides the fundamental contract law principles governing agreements in Indonesia, including formation, validity, and enforcement of contracts.
Law No. 5 of 1999 on Competition: Anti-monopoly and unfair business competition law that may affect joint ownership arrangements and commercialization agreements.
Government Regulation No. 20 of 2005: Regulates technology transfer, implementation of patents, and intellectual property rights in Indonesia, particularly relevant for exploitation and commercialization provisions.
Patent Cooperation Treaty (PCT): International patent treaty to which Indonesia is a party, relevant for international patent protection and cross-border aspects of the agreement.
Law No. 25 of 2007 on Investment: Regulates foreign investment aspects and technology transfer requirements that may apply to joint patent ownership involving foreign parties.
Government Regulation No. 36 of 2018: Implementing regulation for the Patent Law, providing detailed provisions on patent registration, maintenance, and transfer of rights.
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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