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Do Canadian employees own their IP?

This article mentions the rules that apply in Canada to employer-employee relationships between copyright, patents and industrial designs. JDsupra advices to put in place contracts which include appropriate clauses that address the transfer of intellectual property rights.
Section 13(3) of the Canadian Copyright Act provides for an important exception: if the work is created in the course of employment under a contract of service, and absent any agreement to the contrary, the employer will be the owner of the copyright in the work created by the employee without the need for a formal assignment.

  • More interesting news in this article are:Factors that may be considered in determining whether the author of a work is an employee or an independent contractor include the level of control the employer has over the author’s activities, whether the author provides their own equipment, whether the author hires their own helpers, and the degree of financial risk taken by the author. determining whether the work was created under the employer’s instructions and using its resources (e.g., equipment, confidential information, etc.) or during the author’s own free time by using their own resources. It is important to note that even if a work is created during the author’s free time and at their own initiative, ownership of copyright in the work could still vest in the employer if it was part of the employee’s duties to use their creative skills to create that type of work for the benefit of their employer.
  • In the academic context professors will usually retain ownership of the copyright in their work despite their employment relationship.
  • Moral rights are granted exclusively to the author and include the author’s right to maintain the integrity of the work and the right to be cited as its author. Since moral rights cannot be assigned, even if the employer is to be the owner of the copyright in its employee’s work pursuant to the employment exception or by contract, it is important for an employment contract to provide for a waiver of the author’s moral rights.
  • For PATENTS: The employee will retain ownership of the patent rights in their inventions. The employer can nevertheless benefit from two exceptions to that rule: the employer will be entitled to the patent rights in the invention of an employee if the employer has an express agreement to that effect with the employee, or if the employee was “hired to invent”.

This article in JDsutra was written with the help of Skylar Hansol Yoo

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