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Intellectual Property and Innovation in Times of Crisis

Frédéric Letendre

Nowadays, more than ever, it is important to recall the importance of intellectual property rights and to inspire innovative as well as more traditional businesses on the opportunities for the creation of new intellectual property assets.  As Plato once said, “necessity is the mother of invention”!

How will your business remotely identify, “grab” and protect innovations its employees and sub-contractors?

What is intellectual property?

Intellectual property means any creation of the mind that is the subject of a right. The main types of intellectual property are copyright, industrial design, patent, and trademark.

Copyright protects the rights in an original work, such as texts, pictures, software codes, logos, websites, etc.

An industrial design protects the visual characteristics of a finished object, such as the body of a car, the graphical user interface of a telephone or a computer-generated animated design.

Patents protect inventions, such as the process of charging a cell phone battery or the breathable property of clothing fabric.

A trademark protects distinctive elements, such as a word, a drawing (in 2D and 3D) or even a hologram, used to distinguish the products or services of one business from those of others on the market, such as YULEX, Apple, Amazon, the Nike design, etc.

Who owns the intellectual property rights?

Canadian copyright law provides that, as a general rule, the author is the first owner of the copyright. However, unless otherwise agreed, if the author is an employee, the employer will automatically be the owner of the copyright in the employee's creations in the course of his or her employment. What about authors who are self-employed, subcontractors or shareholders of a corporation? The law provides that an assignment agreement must be signed (possibly by electronic means) by any person who is not an employee in order to assign the copyright to the corporation.

Canadian industrial design law provides that the author is the first owner of the design unless the author has executed the design for a third party for any remuneration, in which case the third party in question will be the owner.

Canadian trademark law provides that it is the person who uses the trademark in the marketplace who owns the right to the trademark.

Finally, Canadian patent law does not provide a clear rule in this regard. However, case law has developed several criteria for determining the ownership of rights in an invention.  Thus, it is not because an inventor is an employee or is paid for his or her work that the corporation automatically becomes the owner of the said invention.

How do you protect your intellectual property?

In order to avoid any ambiguity, it is important for the parties to agree at the outset on who will own the intellectual property rights and to execute assignment or license agreements, depending on the agreement reached. It is also important to sign confidentiality agreements with anyone who has knowledge of your creations in order to preserve their secrecy.

Within your corporation, it is advisable to establish internal policies or agreements (i.e. invention and proprietary information agreements), particularly with regard to the protection of your confidential information, to maintain good communication and understanding of intellectual property by your employees and management, and to act accordingly, especially in times of crisis.

Among other things, your policies should define how an employee or third party will promptly disclose to your corporation any discoveries, innovations, new work, improvements, etc., that may be made.

Opportunities in times of COVID-19?

There are a number of opportunities for innovative corporations to create intellectual property assets in times of crisis, particularly to address equipment shortages and to develop remedies to this global pandemic.

On March 24, 2020, the Government of Canada passed Bill C-13, which authorizes the government to use patented inventions to respond to a public health emergency related to COVID-19. The Government is committed to paying a compensation that it considers appropriate in the circumstances, taking into account the economic value of the authorization and the extent to which they make, construct, use or sell the patented invention.

The Canadian government is also asking for the help of those who can provide medical supplies to meet the needs related to COVID-19, including gloves, masks and surgical gowns, sanitizers, wipes and ventilators.

The National Research Council Canada (NRC) also provides funding to SMEs for the development of solutions to COVID-19 challenges.

Our clients are often victims of intellectual property fraud attempts by receiving emails containing false invoices to be paid. The Government of Canada has published a COVID-19 fraud warning list. We must be all the more vigilant in the context of this crisis.

Finally, this crisis will certainly encourage several businesses to develop new innovative solutions. BE CAREFUL! If you disclose your innovation to the public before filing an application for appropriate intellectual property protection, for example through press releases, media interviews or by presenting it to the public, you risk losing all rights related to your innovation. Ask your IP professional before disclosing your innovation.

For assistance in protecting your creations, please contact:

Frédéric Letendre, partner - fletendre@yulex.ca 

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