Intellectual Property Law – fundamental protective measures

26 October 2020

Regardless of the particular industry in which a business operates, organizations encounter a variety of sources of intellectual property (IP) assets within the normal course of business. Some of the most prevalent and valuable IP assets encountered within a business, include: technologies, brands & logos, inventions & products, software, novel designs, unique processes and secret formulas.

Whether a business operates on a small scale, or on a large multinational platform, it is important that businesses take proactive measures to protect their IP assets so that they may continue to obtain the full financial benefit that IP assets ultimately provide.



When assessing an organization’s IP assets in an effort to revise, strengthen or simply maintain current practices, it may be helpful to reference these fundamental IP protective measures:

  1. Patents
  2. Trademarks
  3. Industrial Design
  4. Copyright
  5. Contractual Agreements; and
  6. Policy and Training

Patents

A Canadian patent may be obtained for any new invention, including processes, machines, methods of manufacturing or a composition, or any new and useful improvement to one of the above.

Patents provide protection by giving exclusive rights (i.e., a monopoly), to the patent holder to exclude others from making, using, or selling your invention for a duration of 20 years.

An invention created by joint inventors would be jointly owned, with specific rights accorded to each co-owner, so it is important to consider a Joint-Ownership Agreements when co-creating.

In general, when an invention is created in the course of an employment relationship, the invention will be owned by the employer, not the employee who created it.

Trademarks 

Trademarks provide protection for business names, logos, slogans, sounds or other devices that serve to distinguish the source of particular good or service.

In Canada, trademarks do not need to be registered to be protected. However, registration provides an applicant with greater legal recourse in the event of a trademark dispute. The protection offered by a registered trademark lasts for 10 years, and is renewable.

Industrial design

Industrial design provides protection for the appearance of a product. This could relate to shape, configuration, pattern or ornament, or any combination thereof.

The term of the registered protection of the design begins at registration and ends on the later of 10 years after the registration date and 15 years after the filing date.

Registration of a design provides the owner with the right to prevent others from making, importing, selling or renting articles incorporating the registered design or a substantially similar design.

Copyright

Copyright protection works by limiting who has the right to produce or reproduce a work or substantial part. It consists mainly of literary and artistic work, but can also subsist in other subject matters, such as sound recordings, broadcast signals and performers' performances.

In Canada, copyright protection arises automatically upon the creation of an original work.

Contractual agreements

There are some basic contractual arrangements companies can put in place to provide an added layer of protection for their IP assets.

Employment Agreement

An organization can have employees sign an Employment Agreement at the time that an employee accepts a new position, which establishes that the employer owns any intellectual property created by the employee. This provides the organization with legal recourse in the event that an employee shares, uses or is otherwise negligent in handling confidential company information during both the course of employment, and where the employee no longer works for your organization.

Confidentiality Agreements

Similarly, organizations may consider implementing Confidentiality Agreements in the course of business with parties external to the organization (i.e., suppliers). This kind of agreement ensures that any confidential information distributed between organizations with the purpose of facilitating business remains confidential after the discussions conclude.

Joint Development Agreements

Lastly, Joint Development Agreements are an important tool to ensure that IP rights are protected in the event that your organization collaborates with other individuals or businesses. These agreements establish how IP assets will be dealt with in the event of a dispute, and the degree of ownership of the invention to which each party will be entitled.

Policy and training

A simple and effective way to prevent IP assets from being misused or lost from within the organization, is to ensure that your organization implements a comprehensive IP policy, and supplies the necessary training for all employees.

The benefit of providing IP policy training is that it ensures that employees are aware of any potential hazards or methods by which company IP can be lost, and may ultimately reduce the number of occasions where IP assets are “accidently” lost or leaked to external parties.

Resources

As a global leader of Intellectual Property law, Gowling WLG has a vast array of IP resources, useful for both high and low level knowledge. Below are a few resources, in a variety of formats, that may help individuals and organizations strength their understanding of IP law. Gowling WLG’s professionals are always available to answer any questions and work towards your IP goals.

 


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.