Things to know
Canada is different
Important differences exist between intellectual property (IP) rules in Canada and elsewhere. Key points to remember as between Canada and the U.S. include the following:
- Canada does not have a “work for hire” regime, making it critical to localize IP ownership clauses in agreements with employees, contractors and service providers
- Canada’s “fair dealing” exceptions to infringement of copyright are different from “fair use” principles in the U.S. and may not be available in similar circumstances
- It is necessary in Canada to have a waiver of moral rights signed by each person involved in the creation of a work protected by copyright
Ownership
The rules for ownership of IP depend on the type of IP:
- For copyright, in most circumstances, an employer is deemed to own a work created by an employee, but an independent contractor or service provider is deemed to own a work that it creates (subject to an override in a written contract)
- For patent, the employee owns their invention except in circumstances where the company is the intended owner or there is an override in a written employment or services contract
- IP created by more than one person or entity will be jointly owned, unless otherwise agreed; joint ownership can create challenges in decision-making regarding how IP rights are prosecuted, maintained and enforced and how profits are shared
Things to do
Address intellectual property (IP) ownership in a written agreement with each employee. Key concepts to cover include:
- No incorporation of previously created or third-party IP, such as work done during prior studies or employment, into company IP without clear permission
- Assignment to employer of all IP generated by employee in the course of employment
- Waiver of moral rights by employee
- Commitment of employee to take steps required by employer to register, maintain, protect and enforce its IP
Agreements with contractors and service providers
Address IP ownership in a written agreement with each contractor or service provider. Key concepts to cover include the ones applicable to employment contracts (see above), plus rules regarding each party’s rights with respect to:
- Background IP owned by each party before the arrangement
- IP generated within the arrangement
- IP that may be developed following the arrangement
Agreements with customers
Where commercially feasible, address licence rights and IP ownership in agreements with customers. Key concepts to cover include:
- Retention of ownership of IP by you, particularly in any contract with the government
- Restrictions on use, distribution, sublicensing and assignment