Where an invention is made by an employee of a company, the inventor must assign his or her patent rights to the company if the company is to be the patent applicant. Although an employee in Canada is generally presumed to hold patent rights in trust for his or her employer, this presumption can be overcome by evidence of a contrary agreement. Even where the company has a clear right to ownership of the invention as a result of an express clause in an employment contract, a written assignment by the employee to the company will generally be required by the Patent Office. Assignment Assignment of IP rights is frequently used by small biotech companies who do not wish to become involved in the large scale development or management of their invention. By assigning its IP rights to a larger or better placed company, a small biotech firm can often recapture its research costs and obtain additional funds for new research projects.
Assignment is the permanent transfer of intellectual property rights to another party.
It is akin to the sale of physical property. Licensing Licensing of IP rights is often used by medium or large companies in order to benefit from access to markets or applications otherwise unavailable to them. For example, a mid-sized Canadian company might license its Australian patent rights to an Australian company. Licensing is also common where a patented product or process has applications in several different industries. The patent owner may only operate in one industry, and may wish to license the right to use the patented process or product in another industry to a different company in return for a royalty or other payment.