IP Obligations for Grants & Contributions, and Transfer Payment Agreements

This document provides information, from the Intellectual Property Centre of Excellence (IPCOE), about the obligations of ESDC employees for Grants & Contributions and Transfer Payment Agreements that involve intellectual property (IP). For brevity, this document refers to all of the above agreement types as “G&Cs” and “G&C files.”

1. How does ESDC identify whether ESDC has an IP license in a G&C?

What to do: Clearly indicate on the G&C file whether ESDC has an IP license, and if yes then include a copy of the IP license document(s) on the file. The license may be part of the main G&C agreement.

Why: Federal rules require that G&Cs must not provide the Crown with a specific good or service. To get a specific good or service, ESDC must create a contract, not a G&C. The ESDC IP Management Policy (8.1.5) confirms this: it requires the G&C recipient to keep ownership of all IP the recipient produces under the G&C. So that ESDC can still use the recipient-owned IP, our typical G&Cs give ESDC a non-exclusive IP license. This license allows ESDC to use the materials. (You can learn about the meaning and purpose of non-exclusive, exclusive and sole IP licenses in the IP Management Policy, 8.3.2.)

2. How long should ESDC keep G&C files that involve IP?

What to do: Clearly indicate on the G&C file the allowed destruction date. Note the date the IP license ends or if it is a perpetual license then the date that the copyright expires.

Why: ESDC must keep G&C files until any IP license has ended or if it is a perpetual license until the copyright expires. Often IP lasts much longer than the G&C. However, you can still destroy the file (as far as IP is concerned) if you have determined that the IP is no longer useful or valuable. In Canada, copyright lasts until 50 to 70 years after the author’s death. Licenses of IP are subject to the individual terms and conditions of each license, including the end date. However, licenses to ESDC (the Crown) are often perpetual: They do not expire until the copyright expires.

3. How does ESDC notify the G&C recipient when ESDC wants to publish IP that was created under the G&C?

What to do: Notify the G&C recipient in writing (e-mail is OK), in advance, whenever ESDC intends to publish IP that was created under the G&C, whether online or in any other format. In the notice, ask the recipient to reply in writing (e-mail is OK) to state that ESDC’s planned publication actions will not undermine the recipient’s commercial exploitation of the IP. In the G&C file, include ESDC’s notification and the recipient’s reply.

Why: This reduces risks that ESDC would infringe on the recipient’s copyright. The standard non-exclusive license to ESDC gives ESDC the right to distribute the IP outside of ESDC (such as through publishing), if the distribution/publication does not undermine any commercial exploitation of the work by the recipient. Therefore, ESDC should give the G&C recipient a chance to raise any such objections based on the recipient’s commercial plans.

4. How does IP disclosure work in G&C files?

What to do: Clearly document on the G&C file all IP disclosures.

Why: This provides ESDC with detailed IP information. G&Cs require the recipient to disclose to ESDC each piece of individual IP created under the G&C. Copies of the IP so disclosed should be included on the G&C file.

5. How does ESDC report its IP in G&C files?

What to do: Prepare for and comply with the annual IP report request that your branch will receive from the IPCOE.

Why: The ESDC IP Management Policy (8.5.2) requires all branches to report annually on IP that is created, acquired or licensed to/by ESDC. Your branch response must include G&C licenses.

6. As far as IP goes, what else should be kept in the G&C file?

What to do: In addition to the above items, include the following on the G&C file.

Why: Proper file documentation and good IM practices are essential and are required under the ESDC IP Management Policy, as well as under general federal rules.