Ownership, Assignments, Licences and Employee Inventions
This domain tests who owns an invention, how ownership is transferred, and the special rules for employee inventions. Questions often present an employment or collaboration scenario and ask who is entitled to the patent.
Ownership basics
- Section 27(1): the inventor or the inventor's legal representative may apply.
- Section 31: joint inventors may apply jointly; each owns an undivided interest.
- Section 49: assignments must be in writing and registered to be effective against third parties.
- Section 50: the Commissioner may order that an application proceed in the name of the person entitled.
Employee inventions
- Canadian law has no statutory presumption that employee inventions belong to the employer. Ownership depends on the contract and the duty to invent doctrine.
- Comstock v. Electric Organ and related cases: where the employee was hired to invent, the employer owns; otherwise the employee owns, subject to a shop right in some circumstances.
- Section 27(1) and the "hired to invent" test are the key analytical tools.
Assignments and licences
- Assignment: transfers ownership; must be in writing (s. 49); registration with CIPO gives notice to third parties.
- Licence: permission to use; may be exclusive, sole or non-exclusive; may be limited by territory, field or time.
- Compulsory licences: s. 65 (abuse of rights) and the Access to Medicines regime (s. 21.01 et seq.) for pharmaceutical exports.
- Section 66: licence to use patented invention for government purposes.
Worked example
An engineer employed by a software company develops a compression algorithm at home on weekends, unrelated to her job. She files a patent application. The employer claims ownership. Analysis: under the hired-to-invent test, the employer owns only if the employee was hired to invent or the invention falls within the scope of her duties. Weekend work on an unrelated algorithm is likely outside the scope, so the employee owns. If her employment contract contains a broad assignment clause, the analysis shifts to contract interpretation. Registration of any assignment is required for effect against third parties.
Traps
- Assuming employers automatically own employee inventions; Canada has no statutory presumption.
- Forgetting that assignments must be in writing and registered to bind third parties.
- Confusing assignment (transfer of ownership) with licence (permission to use).
- Overlooking the government use licence under s. 66.