When to call on outside intellectual property counsel

When to call on outside intellectual property counsel

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Routine operations can have unexpected consequences for your clients’ intellectual property (“IP”) rights. Common pitfalls non-IP practitioners frequently encounter include:

  • Potentially patentable inventions. One of the requirements for obtaining a valid patent is for the invention to be novel.  In many countries, non-confidential disclosure of an invention before filing a patent application can destroy novelty and the ability to obtain a valid patent.  It is important to evaluate patentability of a new technology and devise an appropriate patent filing strategy before any non-confidential disclosure takes place.
  • Protecting trademark distinctiveness. A trademark must be distinctive and any goodwill that arises from its use must accrue to the benefit of a single owner.  Multiple users of a trademark may dilute these rights, even where the users are affiliated companies. 

A proper license agreement is essential to protect the distinctiveness of a trademark where multiple parties will use the same trademark.

  • Copyright ownership. Copyright in a work generally vests in the author, unless the author is an employee who creates the work in the course of employment.  Where the work is created by an independent contractor, the owner of copyright will be the author, even where the work was created for valuable consideration.  Implementing appropriate contracts and copyright assignments is critical to ensuring your clients’ ability to use and protect the works created for them by others.

Oyen Wiggs is an established Vancouver-based boutique IP law firm with fifteen lawyers having a variety of technical specializations.  We focus exclusively on IP law and assist a wide range of clients, including SMEs, with IP issues.  The next time you or your clients face a potential IP hazard in your practice, consider reaching out to us for assistance.

Stephanie Melnychuk, 
Intellectual Property Lawyer at Oyen Wiggs
604.669.3432 Ext. 8964
[email protected]

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