Technology Law
 

How can an employer protect its trade secrets and other proprietary information from misuse by employees and former employees?
Certain employees, by virtue of holding positions of power and responsibility in a company, may have fiduciary obligations to the employer that prohibit such employees, while employed and thereafter, from using the employer's trade secrets and proprietary information (for their own benefit or for the benefit of a new employer) or soliciting the company's employees. Subject to such fiduciary obligations, departing employees have an absolute right to go into direct competition with their former employer and make use of the skills and general knowledge they accumulated during their period of employment.

Since most employees do not have fiduciary obligations and even those who do are only somewhat restricted in their ability to compete, contractual protection is essential to prohibit or restrict departing employees from competing with the company, soliciting clients or customers of the company, making use of the company's trade secrets, or disclosing confidential information of the company. The likelihood that a court will enforce such prohibitions and restrictions is increased if they are entered into prior to, and as a condition of, employment, and if they are reasonable having regard to their scope and duration.

For companies that are involved in the creation of new technologies, it is critical that employees enter into valid employment contracts in which they promise not to use information or technologies that belong to others (typically, their former employers). Such contracts should also specify that all work product created by the employee becomes the property of the employer upon creation without the employee retaining any rights in the work product.

The protection of intellectual property in the workplace requires knowledge and experience in several areas of law. The lawyers of  BrazeauSeller.LLP that practice in the areas of employment law, technology law and intellectual property law work together to ensure that our business clients can properly protect the intellectual property their employees develop or use.

How can an owner of intellectual property permit others to use it without losing their exclusive rights of ownership?
A company that owns intellectual property must diligently prevent others from making use of such property without permission. A failure to do so may result in intellectual property falling into the public domain, thereby ending the company's exclusive right to use and exploit the intellectual property. However, it is often necessary for the company to license others to use its intellectual property and, perhaps, to sublicense that use to others. To achieve that goal, the company may permit others to use its intellectual property for specified purposes, in specified markets and for a specified period of time. Such permission is typically granted in a written licence agreement that deals with such matters as licensing fees, the purpose and scope of the licence granted, the protection of the intellectual property and liability issues. A franchise agreement, for example, is essentially a sophisticated form of licence that permits the franchisee to use the franchisor's trademarks, processes and proprietary information, provided the franchisee maintains certain standards of operation. A software distribution agreement is another example in which the owner of the software may permit a distributor to make and distribute copies of the software, subject to certain terms and conditions.

BrazeauSeller.LLP has years of experience negotiating and preparing complex licensing and sublicensing agreements on behalf of clients.