Start-Ups and Scale-Ups

You can file a patent at the World Intellectual Property Office (WIPO) through the Patent Cooperation Treaty (PCT). However, this does not give you an “international patent”. Instead, it provides you with the opportunity to have a patent application pending in over 140 countries for a period of time. This allows you additional time to decide which countries are of primary importance before having to file directly in a country.

Trademark owners can use the Madrid protocol to file trademark applications in multiple countries via WIPO. This system requires a base application to have been filed in a location that meets certain requirements, and then the Madrid protocol application can be filed at WIPO, designating whichever countries are of interest. There are certain drawbacks, for example that the protocol applications are tied to the base application for 5 years, and benefits, for example, there is only one renewal date for all protocol applications and the application fees and renewal fees are paid to WIPO, avoiding having to communicate with various trademark offices for renewals and to make payments.

Our Patent Agents and Trademark Agents can assist you with determining whether these systems are best for you.

Yes. Written agreements are important tools for mitigating and managing risk in all aspects of your business. Well drafted employment agreements provide numerous benefits, including:

1. Helping both parties understand their duties, responsibilities, and obligations during the employment relationship.When parties sign a well drafted employment contract, it sets everyone up for success. A clear understanding of entitlements, such as compensation, benefits and vacation, and obligations, such as duties, confidentiality, and covenants not to solicit or compete, provides a solid foundation on which the employment relationship can succeed.
2. Protecting you in case the employment relationship falters.A well drafted employment contract will help protect you and your company if there are ever any issues with your employees. Among other things, a well drafted contract can limit your exposure to severance in the event you need to let someone go and can protect your ownership interest in your intellectual property.

   If you do not have an employment agreement template, or think yours could benefit from an update, we would be happy to prepare an employment agreement template to best suit the needs of your business and your employment relationships.

The distinction between employee and independent contractor may seem inconsequential for your day-to-day operations, but it is an important distinction under the law, and impacts several aspects of your relationship with the person such as income tax status, contributions to CPP and EI, potential termination of the relationship, and what human rights laws, if any, apply.

Here is a list of some of the important differences between the two:

1. Employees generally work for only their employer while contractors can work for many clients.
2. Employees are paid a wage or salary while contractors submit invoices.
3. Employment relationships are governed by, among other things, the Alberta Employment Standards Code. An independent contractor relationship is governed by the conditions set out in the contract and general principles of contract law.
4. Employers have a high degree of control over how and when the work of employees is carried out, but limited control over the work of a contractor (outside of the product of their work).

When determining whether to hire someone as an employee or contractor, consider the above factors and determine which one is a better fit given the nature of your business and the work that the person will be performing. Some relevant factors include whether you have the capacity for a payroll system or if you feel you need to have more control over how someone is carrying out their work.

If you would benefit from legal advice when deciding whether to hire someone as an employee or independent contractor, or determining whether someone who already works for you is an employee or independent contractor under the law, we would be happy to help.

A private company is a company with private ownership. A private company can be owned by an individual or a group. Private companies can still issue shares, but those shares are not offered for public subscription. A private company will raise funds through private investments, company profits or loans. The most common types of private companies are sole proprietorships, limited partnerships, general partnerships or corporations. Each type of private company will have its own rules regarding ownership, taxation and liability. Our corporate department can assist you with determining the right structure for your new business.

The first step is assessing what intellectual property your business has or can potentially apply for. There are several distinct types of intellectual property including patents, trademarks, designs, copyright, trade secrets, and more. Each type of intellectual property has unique considerations and provides a different scope of protection. For example, patents protect inventions, while trademarks protect logos, brand names, and other marks for distinguishing goods and/or services.

Our intellectual property experts can help you identify your intellectual property, secure rights to that property, and guide you through the entire process of building an intellectual property portfolio.

A patent for an invention grants its owner the exclusive right to make, use, or sell the patented invention in the country(ies) where the patent has been granted. Failure to file a patent application within the appropriate time frame can result in permanent forfeiture of patent rights.

In Canada and the United States, a patent applicant has one year to file a patent application from the earliest date that the applicant (or someone who received knowledge of the invention from the applicant) first makes the invention available to the public. This disclosure to the public can be any non-confidential disclosure to a member of the public that provides sufficient detail of the invention. By way of example, such disclosures may include, a demonstration to a potential customer, a sale of an inventive product, a trade show presentation, or an academic publication.

In many countries outside of Canada and the United States, there is no one-year grace period, and disclosure of the invention to the public prior to filing a patent application may prevent obtaining patent rights.

As an example, if you wish to obtain patent rights only in the U.S. and Canada, then you may take advantage of the one-year grace period. However, if you wish to be able to file in any countries without such grace periods, a first patent application must be filed before the invention has been publicly disclosed.

We recommend consulting a registered patent agent well in advance of any public disclosure of an invention to ensure there is adequate time to prepare a patent application.

A patent application is a technical document that includes a detailed written description of the invention and a set of “claims” that explicitly define the invention for which exclusive rights are claimed. Typically, the application will also include technical drawings to help illustrate the inventive concept.

A patent application must be filed in each country or region where patent rights are sought. The application will be “examined” by the patent office in each country for compliance with the relevant legal requirements. “Examination” is the process where a patent examiner in the given country’s patent office reviews the application and determines whether the invention is patentable. This process usually involves some back and forth with the Examiner to determine what scope of protection (if any) is available. The process can be quite variable in length and complexity.

The services of a registered patent lawyer or agent should always be used for preparing and filing a patent application. There are numerous substantive and formal requirements for a patent application, as well as deadlines and other potential land mines throughout the process. Your patent lawyer/agent can assist with satisfying these requirements and obtaining more robust patent protection.