Partenariat Droit des affaires Business Law Partnerships

In the field of technology, innovative ideas are common. These products and services are distinctive from the rest of the market. As such, they represent a major asset that must be protected in order to maintain a competitive edge in the market.

Intellectual property represents intangible assets that create property rights that can be exploited or transferred. The result of this intellectual property can take various forms: trade secret, trademark, patent or copyright. Each form has its unique features and protection requirements. A company must understand the distinctions in order to take the appropriate measures of protection.

In general, the confidentiality undertaking is the document to use in such circumstances. This document is, at first glance, relatively standard. Organizations often have the reflex to use and sign a standard agreement, without adapting it to a given context. We are of the opinion that various elements must be considered when drafting or reviewing confidentiality agreements, namely the definition of confidential information, the purpose of the use, the protection obligations that the recipient must meet, the duration of the agreement, the destruction and/or return of the information and the applicable law in the case of a dispute.

In the case where several authors are involved in the design of intellectual property, for example when several individuals contribute to the development of a single computer program or a mobile application, a written agreement between these authors is necessary. Indeed, this agreement will establish the contribution of each individual, the percentage of detention, the exploitation of the work, the sharing of the revenues or the transfer of rights.

In the context of software, the paternity/creator can become the subject of dispute. Indeed, the courts have recently focused on the concept of paternity of software. The paternity of software can extend to a contribution that goes beyond the creation of codes or design. With this in mind, if an autonomous worker or an employee is responsible for the design, the creation of source codes or contributes to the software, the assignment of the intellectual property rights is required within the employment contract or the partnership agreement.

The assignment of rights remains an essential agreement for any business whose design and/or development comes from founders, employees, investors or any other third party. This assignment applies, very simply, to the creator of the logo of a company even if the latter was paid for his work.

Lastly, licenses are common contracts in the intellectual property market. They grant the right of use or to manufacture a product for specific purposes. The property rights are thus preserved but the various provisions of the license must be defined. Elements such as the fee (if any) for the use of the license, the exclusivity and the temporary or perpetual use are some of the terms of the license that must be agreed upon.

By Audrey Robitaille and Mélanie Masson