PROTECT YOUR ASSETS AND INTELLECTUAL PROPERTY WITH SOLID CONTRACTS

In technology, innovative ideas are commonplace. These products and services are distinctive from the rest of the market. They therefore represent a valuable asset that needs to be protected in order to maintain a competitive edge in the marketplace. Intellectual property represents intangible assets that create property rights that can be exploited or transferred. The result of this intellectual property can take various forms: trade secret, trademark, patent or copyright. Each form has its own particularities and protection requirements. It is therefore the company’s duty to understand these distinctions and take appropriate measures to protect them. Generally speaking, a confidentiality undertaking is the document of choice in such circumstances. It is, on the face of it, a relatively standard document. Organizations often have the reflex of using a model undertaking without adapting it to a given context, and signing the whole thing without any substantial revision. We believe that various elements need to be considered when drafting or revising confidentiality undertakings: the definition of confidential information, the purpose of the transmission, the obligations of protection to be met by the recipient, the duration of the agreement, the destruction and/or return of the information, and the law applicable in the event of litigation. In cases where several authors are involved in the design of intellectual property, for example, where several individuals contribute to the development of a single computer program or mobile application, a written agreement between these authors becomes a preferred tool. This agreement will establish each person’s contribution, percentage of ownership, exploitation of the work, revenue sharing and assignment of rights. Still in the context of software, authorship can become a contentious issue. Indeed, the courts have recently turned their attention to the notion of software authorship. Software authorship can extend to a contributory action that goes beyond code creation or design. In this light, if a fall worker or employee is responsible for designing, creating source code or contributing to the software, assignments of intellectual property rights within the employment contract and/or partnership agreement are appropriate. Assignment of rights also remains an essential agreement for any company whose design and/or development comes from founders, employees, co-contractors, investors or any other third party. This assignment applies, quite simply, to the creator of a company logo, even if he or she has been remunerated for his or her work. Finally, licenses are common contracts on the intellectual property market. They make it possible to grant rights of use or to manufacture a product for a specific purpose. Property rights are thus preserved, but it is important to define the various attributes of the license.

Elements such as whether the license is free or not, exclusive, temporary or perpetual are just some of the license elements that need to be understood.

By Audrey Robitaille and Mélanie Masson

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