To the extent that is economically feasible, address licensing rights and IP ownership in agreements with customers. The most important concepts are that in Canada, the worker may retain ownership of his inventions, even when it is done in the context of a job, if no specific intellectual property clause is included in an employment contract and the common law factors do not favour the employer who owns the invention. Under the Patent Act, the inventor is considered to be the first owner of an invention, unless there is an agreement to the contrary. In Canada and elsewhere, there are considerable differences between intellectual property (IP) rules. Among the most important points to remember between Canada and the United States are: there are two notable exceptions to this rule. The first is when an employee has been hired under contract with the specific purpose of the invention. In this case, the property is determined by the employment contract. Second, all the circumstances indicate that the independent contractor never intended to own the invention. In other words, the Court may consider whether a tacit clause that the party to the tenancy is the owner of the invention is necessary to the effect of the agreement between that party and the contractor. Third, there must be no agreement that the worker should retain copyright in the works created in the course of his employment. Unlike contracts that must be written under Canadian copyright, such an “arrangement to the contrary” should not be written and could even be presumed in certain circumstances, for example in the academic context where professors generally retain copyright in their work despite their employment relationship. At the beginning of an employer-employee relationship, it is important to ensure that the employer knows where it is with respect to intellectual property. If the employer intends to retain all rights, the employer must ensure that the transfer of IPRs and the protection of confidential information are provided as part of the worker`s hiring conditions.
These provisions may include: 8. Representations and guarantees. Often hotly negotiated terms, these generally include: insurance and guarantees of the IP owner while preserving the validity of the IP rights granted; Confirmation that the license does not infringe third-party IP rights; and the licensee`s consent to compensate the IP holder for losses caused by his actions and/or omissions, and for any possible limitation of the licensee`s liability to do so.