A startup in the oil-and-gas service sector sought to improve
downhole well stimulation technology. After a few years,
differences between the three founders culminated in the ouster of
Mr. Groves, one of the founders. Mr. Groves was removed as
President and then his employment was terminated. The company had,
during those few years, filed for patent protection on a number of
inventions which were invented by Mr. Groves. After his
termination, he promptly sued his former employer based on a claim
of ownership of those inventions which were created during the
course of his employment.
In the recent decision in Groves v Canasonics
Inc., 2015 ABQB 314 (CanLII), the court noted
that the employment agreement between Mr. Groves and Canasonics
included the following condition:
"The Company shall own any and all Copyright and
Intellectual Property created in the course of Employment. Further,
in the event there is a period when the Employee might be
considered an independent contractor, all Copyright created and any
Intellectual Property created shall be owned by the Company."
The Court had no trouble in concluding that the inventions were
patented in the U.S. and Canada by their inventor, Mr. Groves in
his capacity as an employee, who then assigned the inventions to
Canasonics as the employer pursuant to terms of the employment
The lesson for business in any industry is clear: ensure that
your employment agreements - and by extension, independent
contractor and consulting agreements - are clear. Intellectual
property and ownership of inventions should be clearly addressed.
Get advice from experienced counsel to ensure that
the IP legal issues are covered - including confidentiality,
consideration, invention ownership, IP assignment, non-competition
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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