With Vancouver Startup Week 2019 taking place this week, our Technology Transactions Practice Group is sharing a series of articles with tips and strategies for all of Vancouver’s innovators and disrupters who are looking to grow their tech businesses. Stay tuned for exclusive insights on our website, LinkedIn and Twitter.
What is intellectual property?
Almost every time I mention that I work in intellectual property law, the response I get is “Oh, so you work with patents then.” While patents are an important form of intellectual property, they are by no means the only type of valuable intellectual property that a company can hold.
For most startups, intellectual property will take many forms. Software is often the most identifiable intellectual property asset, as it may form the basis of a company’s product or service offering. Branding is another key component of a company’s intellectual property portfolio, typically consisting of company and product names and logos. Further down the intellectual property list, presentation slide decks, reporting templates, employment policies and other documentation used on a daily basis all contain important intellectual property that are sometimes overlooked.
Why is it important?
For many startups, intellectual property is the lifeblood of their business. Not only does it form the basis of product and service offerings, it can also define interactions with customers and how the business operates. Given the importance of intellectual property, every startup should set up its affairs to ensure that it owns the intellectual property that is created in connection with its business.
The legal rules for ownership of intellectual property differ depending on the type of intellectual property involved. Under patent law, an invention will typically be owned by its inventor unless there is an agreement that states otherwise or the circumstances favour ownership by an employer.
Ownership of copyright, which applies to software code, process manuals and other works, is more complicated. Typically, the copyright in a work will be owned by the author. However, if the author created that work in the course of their employment, the employer will own the work. So, if a non-employee (such as a director, founder, consultant or independent contractor) develops software or other materials that are subject to copyright, that software and material will not be owned by your company unless there is an agreement stating otherwise. Even if your company has paid a consultant to create the work, your company may not own the rights to it.
Trademark law is slightly different than copyright and patents, as trademark rights in a name or logo will arise when a name or logo is used in connection with goods and services. However, if your company’s branding (like a slogan or logo) is developed by an employee or outside consultant such as an advertising agency, the copyright in those items will be dealt with in the manner described above.
What you can do to protect yourself?
The best way to protect your valuable intellectual property assets is to be proactive.
At the outset, all founders, contractors and consultants should sign intellectual property assignment agreements that assign ownership of any intellectual property they create to the company. When employees are hired, all employment agreements should contain provisions that confirm the company’s ownership of any intellectual property created in the course of employment. Similarly, any agreements with outside contractors or consultants, whether they are advertising consultants or software developers, should clearly assign all intellectual property rights to your company.
Once you have settled on your company’s branding, it may be worth doing some searches to see if there are others in the market using the same branding. Once you have settled on your branding, registering the name and logo are important steps for protecting your rights.
While these steps are often overlooked for a variety of reasons, as they divert attention and scarce dollars away from growing your core business, losing track of your intellectual property can cost far more in the long run. Savvy investors or purchasers will always ask about intellectual property ownership and obtaining these rights after the fact can be time consuming and expensive. Similarly, rebranding is costly and likely to hurt your brand equity, so pursuing trademark protection early on will help you finalize your brand strategy and provide your company with valuable legal rights in the process.