Intellectual Property Licensing: What It Is and When to Consider It (Part 2)

Intellectual Property (IP) refers to intangible personal property resembling creative work, inventions, logos, and industrial designs and represents a dynamic and rapidly evolving area. Legal professionals must stay updated, especially in Canada, where domestic and international regulations intersect. This blog provides a few key topics on licensing within the Canadian context from a legal perspective.

Understanding Intellectual Property Law

Intellectual property (IP) law protects the human intellect's creations, including inventions, literary and artistic works, commercial symbols, names, and images. The primary types of IP include:

1. Industrial Property Law covers patents for inventions, trademarks, industrial designs, and geographical indications.

2. Copyright Law governs literary works like novels, films, music, architectural designs, and, in certain jurisdictions, software.

Licensing Intellectual Property: Legal Considerations

1. IP Identification & Classification: The first step is categorizing the IP legally. Determining whether it's a patent, copyright, trademark, or another form of IP is essential for drafting licensing agreements.

2. Value Evaluation: For legal professionals, ascertaining the value of IP is not just about market value but also about potential legal liabilities or challenges.

3. Drafting Agreements: The legal intricacies in IP agreements are vast. Clear stipulations on terms of use, royalties, the license's duration, and termination clauses are vital.

4. Ensuring Compliance: Post-agreement, monitoring for adherence to the terms is crucial. Legal interventions might be necessary in case of violations.

What Legal Professionals Must Know

1. Protection Priorities: Ensuring that clients have adequately protected their IP under the relevant Canadian laws is paramount before licensing or marketing endeavours.

2. Infringement Checks: Conducting thorough legal checks to ensure no infringement on existing IPs is vital before any IP transaction.

3. Understanding of International Agreements: Canada is part of various international IP agreements, such as the Berne Convention for the Protection of Literary and Artistic Works and the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention). Legal professionals should understand these treaties' implications on domestic affairs.

Intellectual Property Law in Canada: Specifics

1. Statutory Framework: The primary laws governing IP in Canada are the Patent Act and the Trademarks Act. Understanding their nuances is vital for legal practitioners.

2. Duration of IP Rights: In Canada, the duration of patents issued based on an application filed on or after before October 1, 1989, is twenty years (Patent Act, 1985, s. 45(1)), and for the other patents, "is seventeen years from the date on which the patent is issued or twenty years from the filing date, whichever term expires later have a validity of 20 years from the filing date" (Patent Act, 1985, s. 45(2)). Trademarks registration lasts "for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years" (Trademarks Act, 1985, s. 46 (1)). Legal professionals must advise clients on these timelines.

3. Royalties and Legal Implications: The licensing of intellectual property (IP) in Canada has specific legal considerations that must be taken into account. Legal professionals must be aware of any legal obligations and potential pitfalls related to royalties.

4. Bilingual Considerations: Legal documents in Canada may need to be available in both English and French, given the country's bilingual nature.

5. Engaging Local Legal Expertise: While international law firms may venture into Canada, it's imperative to integrate local legal expertise due to Canada's unique IP landscape.

In Canada, intellectual property law is a complicated field that necessitates lawyers to keep themselves well-informed at all times. Irrespective of whether they are supporting emerging businesses or international corporations, having a solid understanding of IP law and its intricacies in Canada is essential to provide effective client representation and achieve successful legal outcomes.

If you wish to know more about Intellectual Property, feel free to click on the link below and read part one.

**The information provided herein is a general background of contractual, technology and intellectual property law concepts. It does not constitute legal advice, and should not be relied upon as legal advice. Athena Innovation & Legal, nor the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information.**