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R
outine operations can have unexpected conse-
quences for your clients' intellectual property
("IP") rights. Common pitfalls non-IP practitio-
ners frequently encounter include:
• Potentially patentable inventions. One of the require-
ments for obtaining a valid patent is for the invention to
be novel. In many countries, non-confidential disclosure
of an invention before filing a patent application can
destroy novelty and the ability to obtain a valid patent. It
is important to evaluate patentability of a new technology
and devise an appropriate patent filing strategy before any
non-confidential disclosure takes place.
• Protecting trademark distinctiveness. A trademark
must be distinctive and any goodwill that arises from
its use must accrue to the benefit of a single owner.
Multiple users of a trademark may dilute these rights,
even where the users are affiliated companies.
A proper license agreement is essential to protect the
distinctiveness of a trademark where multiple parties
will use the same trademark.
• Copyright ownership. Copyright in a work generally
vests in the author, unless the author is an employee
who creates the work in the course of employment.
Where the work is created by an independent con-
tractor, the owner of copyright will be the author, even
where the work was created for valuable consideration.
Implementing appropriate contracts and copyright assign-
ments is critical to ensuring your clients' ability to use and
protect the works created for them by others.
Oyen Wiggs is an established Vancouver-based boutique
IP law firm with fifteen lawyers having a variety of tech-
nical specializations. We focus exclusively on IP law and
assist a wide range of clients, including SMEs, with IP
issues. The next time you or your clients face a potential
IP hazard in your practice, consider reaching out to us
for assistance.
Stephanie Melnychuk,
Intellectual Property Lawyer at Oyen Wiggs
604.669.3432 Ext. 8964
smelnychuk@patentable.com
When to Call on Outside
Intellectual Property Counsel
by Stephanie Melnychuk, Oyen Wiggs
