Canada: Who Owns Your Intellectual Property?

Last Updated: April 4 2016
Article by Cody Mann

Although traditional economies (i.e., industrial and resource based ones) will probably still be around for a while, there is no doubt that a knowledge based economy, reliant on science, technology, and information is slowly taking off. As a result, it is likely that the explosion of technology creation that has occurred in recent years will continue, and possibly become even greater. 

This new focus on technology creation and innovation, however, poses unique legal questions for business owners and employees. For most new endeavors, the necessary technology will not exist. As a result, employees, or even other businesses, may need to be engaged to develop whatever is required. But who will own those creations? How will businesses use the law to protect their ideas or work?

Intellectual property law will play a key role here in giving businesses, or people, ownership rights for these new creations. The following is a discussion of three prominent forms of intellectual property and how ownership arises under each. As one will see, there are steps that can be taken ahead of time to ensure that intellectual property ownership is being protected in the best way possible.

Trade secrets

The term "trade secret" essentially refers to confidential information. This may include business plans, customer lists, formulas, ideas and so on. Unfortunately, there really isn't a great legal mechanism to obtain ownership over confidential information. Once confidential information is disclosed, all rights to it may be lost. So, it is often said that the best way to protect confidential information is to never disclose it in the first place. But that does not make sense when you need to run a business that involves teams of people or employees.

With that said, in some circumstances there may be a remedy against employees or business partners who take confidential information and use it elsewhere.  A duty of confidentiality may arise automatically with certain people, such as those in a fiduciary relationship. However, the most prudent way to protect confidential information is through the use of a non-disclosure agreement – a contract whereby the person receiving the information promises, amongst other things, to not disclose information or use it. If need be, that agreement can then be used to seek remedies in court, such as damages or an injunction. 

Copyright

Copyright law protects the expression of ideas. It does not protect the idea itself, but rather it extends to the form in which the idea is expressed. The range of forms that copyright may extend to is broad. It includes works of art, books, drawings, designs, logos, songs, movies, software source code, and website content. Copyright owners are given certain rights including the exclusive right to copy, publish, distribute, or perform the work. 

The Copyright Act sets out some basic rules about ownership. Usually, the author of the work automatically becomes the owner of the copyright. However, there is an important exception to this rule for employees. An employee that creates work in the course of employment will likely not be the owner of the copyright. Instead, the employer is deemed to be the first owner. Independent contractors, on the other hand, do not fall within this exception and will retain copyright ownership.

These general rules can always be modified by an express contractual agreement.  A written agreement may set out who owns what during the course of a business or employment relationship. Indeed, an agreement like this is a valuable tool to ensure that a business retains copyright and to prevent uncertainty, especially when using independent contractors. Since it is not always clear as to whether a person is an "employee" or an "independent contractor" in the first place.

Patents

Functional inventions are protected by patent law. However, patents are not automatically granted. Instead, there is an application process that is complex, technical, and usually quite expensive. Further, not everything will be patentable. There are certain criteria that have to be met. For instance, the invention must fall within patentable subject matter. In Canada there is specific subject matter that cannot be patented, including mathematic formulas, abstract theorems, and scientific principles.

Patents are usually granted to the inventor. The Canadian Patent Act does not have any specific rules about ownership in the employer/employee context. However, cases that have gone through the courts do provide some guidance. For example, in Nature-Control Technologies Inc. v. Li, the B.C. Supreme Court stated the following:

"There is a presumption that an inventor, even one who is an employee, is entitled to the benefit of his or her own invention... The presumption can apply even if the employee's invention is useful for the employer's business; the employee made use of his employer's time, co-employees, and material; and the employee allowed the employer to use the invention. There are only two exceptions to this presumption: where there is an express contract to the contrary or where the person was employed for the express purpose of inventing or innovating (meaning that the parties impliedly intended otherwise)..."

If an employee invents something while doing the very thing they were employed to do, then the employer is likely to be the owner of the invention (see here for such a case). 

Once a patent is granted, it gives the owner certain rights. This includes the ability to recover money from those who wrongfully sell or otherwise use the invention and the right to exclude others from using the invention altogether.

Get a written agreement

As one may begin to notice, there is a common theme here. Written agreements are key instruments when it comes to protecting ownership of intellectual property and avoiding uncertainty. Whether it is with the people you are doing business with, or between employer and employee, a well-written contract will go a long way if there is ever a dispute about who the rightful owner of intellectual property is. 

About Mackrell International – Canada - Lindsay Kenney LLP is a full service business law firm with offices in Vancouver and Langley, BC and a member of Mackrell International. Mackrell International – Canada is comprised of four independent law firms in Alberta, British Columbia, Ontario and Quebec. Each firm is regionally based and well-connected in our communities, an advantage shared with our clients. With close relations amongst our Canadian member firms, we are committed to working with clients who have legal needs in multiple jurisdictions within Canada.

This article is intended to be an overview and is for informational purposes only.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
Smart & Biggar/Fetherstonhaugh
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
Smart & Biggar/Fetherstonhaugh
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions