Intellectual property rights

IP protection for software

Which intellectual property rights are available to protect software, and how do you obtain those rights?

Canada has a robust IP framework. As in any other country, fintech innovations are generally protected through patents, copyrights and trade secrets. Canadian IP databases can be used to search up filed or registered trademarks, copyrights and patents.

Inventions that can be patented include products, processes or machines. Computer code in written form has automatic copyright protection. However, if a computer program provides a new solution to a technological problem and modifies how a computer works, the software-implemented invention may be patentable.

IP developed by employees and contractors

Who owns new intellectual property developed by an employee during the course of employment? Do the same rules apply to new intellectual property developed by contractors or consultants?

The owner of the invention is entitled to patent it unless there has been an assignment of the invention and the associated IP rights. Express contractual language should be used in employment agreements as best practice to protect IP created by an employee. Barring any specific provision, there is a presumption that employees are entitled to ownership of a patent of any invention they created in the course of their employment. Employers will be deemed owner of the invention and resulting patent rights if there is an express contract stating such and if it can be proven that the employee was employed for the express purpose of inventing or innovating.  

In the absence of express terms, the employer is the first owner of the copyright in works that an employee creates in the course of their employment. For contractors or consultants, courts will look at various factors. For work created outside of working hours and/or using their own resources, the central factor is the subject matter of the copyright work.

Joint ownership

Are there any restrictions on a joint owner of intellectual property’s right to use, license, charge or assign its right in intellectual property?

Generally, patent co-ownership can be changed by parties through written mutual agreement. However, co-owners of a patent cannot dilute the other co-owner’s interests in the patent.

One applicant cannot withdraw a patent application without the consent of the other co-applicants. Similarly, once the patent is registered, one owner cannot license the patent rights to a third party without first obtaining consent from the other co-owners.

For assignment, however, a co-owner may assign his or her own interest in a patent in the absence of the other co-owner’s consent unless doing so would dilute the co-owners’ rights.

Trade secrets

How are trade secrets protected? Are trade secrets kept confidential during court proceedings?

There is no formal process for protecting a trade secret, or any act or statute which regulates trade secrets in Canada. Trade secret law is developed out of the common law, or in Quebec, civil law, and includes some dispositions in the Criminal Code.

Courts will use several factors to assess whether an action involves the misuse of a trade secret and how to compensate the owner for its misuse. Businesses can also use non-disclosure or confidentiality agreements or clauses and encryption or password protection to protect trade secrets.

Branding

What intellectual property rights are available to protect branding and how do you obtain those rights? How can fintech businesses ensure they do not infringe existing brands?

Brand names and logos can be registered as trademarks for 10 years and renewed indefinitely. Businesses should protect their IP with registrations and documentation to control ownership and use of its IP rights, including permitted use under licensing and collaborative agreements with third parties.

In order to ensure that a fintech company is not infringing third-party trademark rights, freedom to operate searches can be conducted to ascertain if there are any prior third party rights that could pose an obstacle to the use or registration of a mark, or both. Such searches are highly recommended prior to commencing use of a mark as it could become costly to have to transition to a different mark once investments have been made in an original name.

Remedies for infringement of IP

What remedies are available to individuals or companies whose intellectual property rights have been infringed?

IP rights holders, not CIPO, are responsible for enforcing their IP rights. Remedies for infringement include seeking damages sustained as results of the infringement, the profits made by the infringer, a reasonable royalty and partial court costs or attorney fees. In addition, injunctive relief may be sought as well.  In lieu of the above remedies, Copyright owners can be compensated through statutory damages (this is a remedy exclusive to copyright infringement claims).