A clause assigning “all intellectual property” is a description of intent, not a transfer. Copyright Act section 13(4) makes an assignment invalid unless it is in writing and signed by the owner. Trademarks Act section 48 and Patent Act section 49 impose separate recording rules. And every one of them assumes the seller owned the thing to begin with.
Key takeaways
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The agreement is one document; the transfer runs on four federal Acts, and only one makes the paperwork a condition of validity. Copyright Act s.13(4) does: an unwritten assignment is invalid, not just unrecorded. Trademarks Act s.48(1) and Patent Act s.49(1) only make a transfer recordable.
Miss it and you own the brand and the invention but not the software, drawings or manuals. Treadstone Law’s IP due diligence for buyers works asset by asset.
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Marginal note Ownership of copyright. Section 13(1): “Subject to this Act, the author of a work shall be the first owner of the copyright therein.” Payment appears nowhere in it.
The exception is subsection (3), marginal note Work made in the course of employment: “Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright”.
Three conditions, not one: a contract of service, work made in its course, no agreement to the contrary. Same split on software written by employees.
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Subsection (3) is about employment. A freelancer, design studio or incorporated consultant works under a contract for services, so it never engages: the contractor owns the copyright.
CIPO frames the wider risk the same way, warning that “Without contracts defining the ownership of an invention, an inventor (e.g. an employee or a contractor) could file and automatically become the first owner of a patent”, and that “Without contracts that define who can file and own brands, an employee or a contractor could register and become the owner of a trademark before you do.” That is the Office’s position, not the Act.
With no written assignment the seller has none to sell, so the clause conveys nothing. See employee versus contractor copyright and assignments from freelancers.
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Both statutes use the same phrase. Employment Insurance Act s.5(1)(a) makes insurable “employment in Canada by one or more employers, under any express or implied contract of service or apprenticeship, written or oral” — the Copyright Act’s expression exactly.
The answers do not transfer. A CRA determination decides pensionable and insurable earnings and withholding; nothing makes a ruling under the Employment Insurance Act binding on ownership. Section 13(3) also requires the work to be made in the course of the employment; the tax test does not.
Run both, keep them apart: our article on contractors who are really employees covers the withholding exposure, and does not settle ownership.
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Subsection (4), marginal note Assignments and licences, lets an owner assign “either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector of the market” — then imposes the condition: “no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent”.
The signature must come from whoever owns the right: a corporation signing for work its founder wrote personally signs as nobody. A partial assignment splits ownership — subsection (5): “the assignee, with respect to the rights so assigned, and the assignor, with respect to the rights not assigned, shall be treated … as the owner of the copyright”.
Past infringements are separate. Subsection (6): “a right of action for infringement of copyright may be assigned in association with the assignment of the copyright” — so it can be left behind. See IP assignment clauses and licensing v. assigning.
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Section 14.1(1) gives the author “the right to the integrity of the work” plus attribution and anonymity. Subsection (2): “Moral rights may not be assigned but may be waived in whole or in part.”
Subsection (3) removes the assumption most agreements make: “An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights.” A waiver is a separate instrument; subsection (4) lets one given to an owner or licensee be invoked “by any person authorized by the owner or licensee to use the work”.
Section 14.2(1): “Moral rights in respect of a work subsist for the same term as the copyright in the work.” Subsection (2) passes them on death to “the person to whom those rights are specifically bequeathed”. CIPO adds: “Once moral rights are waived, they cannot be reacquired.”
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Registration creates nothing; it produces evidence. Section 53(2): “A certificate of registration of copyright is evidence that the copyright subsists and that the person registered is the owner of the copyright.”
The rule that matters is s.57(3). An unregistered assignment “shall be adjudged void against any subsequent assignee or licensee for valuable consideration without actual notice, unless the prior assignment or licence is registered … before the registering of the instrument under which the subsequent assignee or licensee claims”.
Do not over-read it. CIPO says in its Guide to Copyright that it “does not verify or examine the claims made in applications for copyright registration” and “cannot guarantee the legitimacy, ownership, authorship or originality of a work”. The mechanics: “To register an assignment, a copy of the original transfer agreement or a photocopy signed by both parties must be filed with CIPO along with the prescribed fee.” Whether to register is a separate call.
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Trademarks Act s.48(1), marginal note Trademark transferable: “A trademark, whether registered or unregistered, is transferable … either in connection with or separately from the goodwill of the business”.
The trap is subsection (2): “Nothing in subsection (1) prevents a trademark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trademarks and the rights were exercised by those persons.” Splitting a brand can destroy it: s.18(1)(b) invalidates a registration where “the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced”, and s.2 defines a distinctive mark as one that “actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others”.
Recording is a request, not a consequence of closing: under subsection (4) the Registrar registers a transfer “on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.” Licensed onward, s.50(1) preserves the owner’s use only with “direct or indirect control of the character or quality of the goods or services”. See assigning a trademark and licensing a mark.
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A patent goes to the inventor. Patent Act s.27(1): “The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative”. The route to a company is that second limb: s.2 defines legal representatives to include “transferees and all other persons claiming through applicants for patents”.
The formality differs, and it changed. Section 49(1) now says only “A patent, an application for a patent, and the right or interest in an invention are transferable, in whole or in part” — no writing requirement on its face. Former sections 50 and 51 each read “[Repealed, 2014, c. 39, s. 134]”. What survives is subsection (4): “A transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded.”
Nor will the Commissioner unpick a double sale — subsection (6): he “is not authorized to remove the recording of a transfer of a patent for the reason only that the transferor had previously transferred the patent to another person.” Designs run identically at Industrial Design Act s.13; on carve-outs, excluding patents from a sale.
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Work asset by asset: who created each item, under what contract, what moved it since. For contractor work, a signed assignment satisfying s.13(4) plus a separate waiver under s.14.1(2); for a founder-registered mark, a specific assignment before closing.
Then record what can be recorded and check what a lender holds: Trademarks Act s.48(3)–(4), Patent Act s.49(2)–(3), and s.57(3) for copyright priority. IP security also layers a provincial regime on the federal registers — perfecting security in IP.
These Acts are federal, but whether an engagement was a contract of service turns on the law governing it. In Quebec, Civil Code article 2085: a contract of employment is one by which “a person, the employee, undertakes, for a limited time and for remuneration, to do work under the direction or control of another person, the employer”; of a contractor, article 2099 says “no relationship of subordination exists between the contractor or the provider of services and the client”.
Not by itself. A copyright assignment is invalid under Copyright Act section 13(4) unless it is in writing and signed by the actual owner of the right. If that owner is a contractor rather than an employee, the company may never have obtained a written assignment, so the clause conveys nothing.
No. The employer-ownership rule in section 13(3) applies only to work created under a contract of service, meaning an employee. A freelancer, design studio, or incorporated consultant working under a contract for services retains copyright unless they signed a separate written assignment.
No. Section 14.1(2) provides that moral rights may not be assigned, only waived, and a copyright assignment does not by itself constitute a waiver of moral rights. A separate waiver instrument is needed to address integrity, attribution, and anonymity rights specifically.
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