CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights There are no compulsory requirements or restrictions for the assignment of patent rights and assignment can take place at any time. It is best practice to ensure that any assignment is in writing, clearly identifies the patent or patents being assigned, and is signed by the parties to the assignment. An assignment can be regis- tered with the Patent Office, but this is optional. 10.2 Procedure for Assigning an Intellectual Property Right As noted in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights , there are no prescribed requirements for assign- ment. However, it is best practice to assign (transfer) the rights in writing, with signatures from both parties. Parties should identify who is involved in the transfer, pertinent patent reg- istration information, the rights being assigned, and any payment or consideration received for the transfer. It is also good practice to have a witness present to sign the transfer document as well.
10.3 Requirements or Restrictions to License an Intellectual Property Right There are no formal requirements for licensing patent rights. As set out in 10.2 Procedure for Assigning an Intellectual Property Right , it is best practice to license the rights in writing and in the presence of a witness. From a practical perspective, it is best to be specific regarding the terms of the licence, including whether the licensee will be responsible for seeking remedies for any infringement. As with assignment, there is no requirement to register a licence with the Patent Office. The Patent Act gives rights to claim infringement to the patentee and “persons claiming under the patentee”, which commonly includes licensees. It is not required to have a written licence to fall within this definition. However, having a licence in writing, where the terms are clearly set out, is beneficial to ensure that the rights of both the licensor and licensee are clearly defined and can be effectively enforced. 10.4 Procedure for Licensing an Intellectual Property Right See 10.3 Requirements or Restrictions to License an Intellectual Property Right .
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