IP Obligations for the Requirement File
This document provides info, from the Intellectual Property Centre of Excellence (IPCOE), about your group’s obligations for requirement files (contract files) with intellectual property (IP).
1. How long should ESDC keep requirement files that contain IP?
What to do: Clearly indicate on the requirement file the destruction date allowed for the file. Note the date the license ends, or if a perpetual license, then the date the copyright expires.
Why: ESDC must keep requirement files until the IP rights have expired or IP license has ended. Often IP lasts much longer than the contract. For instance, in Canada…
- Copyright lasts 50 years or more (generally until 50 to 70 years after the author’s death)
- Trade marks last 10 years, subject to renewal and continued use
- Official marks never expire
- Licenses of IP are subject to the individual terms and conditions of each license; licenses given to ESDC (the Crown) are often perpetual and do not expire until the IP itself expires (as per the number of years above)
You can still destroy the file earlier (as far as IP is concerned) if you have determined that the IP is no longer useful or valuable.
2. How does ESDC identify who owns the IP in a requirement file?
What to do: If the Contractor will produce new IP, clearly indicate on the requirement file who owns the IP, which should be either Contractor-owned or Crown-owned, and identify any potential for commercial exploitation of the IP. To do this, you must place a copy of the required form for contracts that produce new IP on the requirement file and send it to the CFOB procurement specialist assigned to your file.
Why: The Policy on Title to Intellectual Property Arising under Crown Procurement Contracts (Innovation Canada) requires that Contractors own the IP created under a contract, unless certain exceptions in Annex A of the Policy apply. ESDC’s standard terms and conditions reflect this by giving IP ownership to the Contractor. If you decide that ESDC (the Crown) must own IP created under the contract, you must choose a valid exception. The IP Produced under a Contract form helps ESDC meet these policy requirements.
3. How do IP licenses work in requirement files?
What to do: Clearly document on the requirement file any advice, justifications and decisions about IP licenses. If the licenses in your file are not perpetual, include the expiry dates and set up a system to flag the renewal dates for licenses granted to ESDC.
Why: If the Contractor will own the IP under the contract, ESDC’s standard terms and conditions (for professional services) give the Crown (ESDC) a non-exclusive, royalty-free, irrevocable, fully paid, perpetual and worldwide license to the IP. This includes the right to modify, improve, translate or further develop the IP. The license also provides that any such modifications, improvements etc. will be owned by ESDC or such entity as EDSC decides. The above is the ESDC standard and therefore if a need arises to modify the standard license, then the assigned Procurement Specialist must contact the Intellectual Property Centre of Excellence before proceeding with the purchase.
4. How does IP disclosure work in requirement files?
What to do: Clearly document on the requirement file all IP disclosures.
Why: This provides ESDC with detailed IP rights information. The standard terms and conditions require the Contractors disclose to ESDC each piece of individual IP created or obtained under the contract (most often, this happens naturally when they submit deliverables). They must do so on or before the end date of the contract. If applicable, they must also tell ESDC the names and contact information of any Subcontractors who own the IP.
5. How does ESDC handle releases in requirement files?
What to do: Include on the requirement file copies of all signed releases completed by individuals. If any recording or photography occurs on private property, include the required property release on the requirement file.
Why: Federal contracts for photography or other multimedia services (e.g. video) typically require consent forms signed by all individuals whose likeness is being recorded, to comply with privacy and other legislation. Property releases apply to recordings in private locations. Standard release forms are available through the IPCOE.
6. How does ESDC handle moral rights in requirement files?
What to do: Include on the requirement file copies of all signed moral rights waivers.
Why: The standard terms and conditions require the Contractor to get waivers of moral rights from every author that contributes to the IP delivered under the contract.
7. What happens when a Contractor sells or licences IP to a 3rd party?
What to do: Clearly document on the requirement file any notices provided by the Contractor about changes in who owns the IP.
Why: EDSC does not want to obstruct commerce. However, the standard terms and conditions require that under any sale, assignment or transfer (or license!) of IP by the Contractor, the Contractor must impose on the third party all of its IP obligations. The Contractor must also notify Canada of the third party details, and ensure that the third party is required to act in the same way for any future sale, assignment, transfer or license.
8. How does ESDC report its IP in requirement 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 all branch contracts that produced IP. This feeds into the reporting requirements of the Policy on Title to Intellectual Property Arising under Crown Procurement Contracts (Innovation Canada).