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From startup to scale-up – How to manage evolving IP challenges in cleantech

It is a problem we all face at some point in our lives – the feeling of where to go from here.
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It is a problem we all face at some point in our lives – the feeling of where to go from here. This collective confusion is experienced in a multitude of different ways but when it comes to business, it is often at the veritable juncture between company startup and company scale-up.

After securing financing and finding the creative and operational footing needed to take the next step, companies are often blindsided by a slew of tricky Intellectual Property (IP) situations for which they can be largely unprepared. 

“When you get an infusion of capital, you’ve got to demonstrate that you can use that capital efficiently to grow your business, invest in new ideas, hire new people, and it can be tough to manage all that,” says Roch Ripley, head of the Vancouver office’s IP department and partner at Gowling WLG.

“How do you manage the influx of people and consequence of the greater amount of innovation that you are going to have?”

Ripley consistently ranks among Canada’s top lawyers and specializes in patent prosecution across multiple technology-related sectors, including e-commerce, hydrogen, AI and clean technology. 

“One thing about cleantech is that it is usually costly to develop,” says Ripley. “If you are wanting to do clean energy, wastewater treatment, carbon capture, things of that nature require a lot of equipment.”

Clean technology, particularly the type that can create large-scale impacts on climate adverse businesses or services, is one of the most timely and important sectors for securing our future. So, naturally, the amount of innovation in the industry is remarkably high. 

“Usually, I will sit down with a client and itemize all the innovations that they’ve got that are potentially useful and decide which will be most commercially important,” says Ripley.

“What is very surprising to people is that even when they think they have found a new pioneering invention, a lot of times someone else has thought of the same thing and patented it or tried to patent it and failed or found it not commercially successful.”

As the saying goes, time is precious, and once a startup has the financing and idea set in place, it can feel like a mad dash to gain ownership and stability while furthering the company agenda. So how can you manage the transitional time of scaling-up without sacrificing your idea or company?

Get some help

“It can really help to have a point person – now, that doesn’t have to be a lawyer – just someone who is savvy enough to manage the process, get documents signed, sit in on meetings, things like that,” adds Ripley.

“You may need to hire an IP manager, mainly to track who is developing what, and ensure all the different ideas that are percolating in your company are being protected on their own merit.”

Although an extra pair of hands is always helpful, some companies that are scaling-up may still not have the resources to dedicate for a new hire, which is why it is essential to do your own homework.

Freedom to operate research

“It is important to do some freedom to operate searches just to see what your competitors have in terms of the patent portfolios out there,” says Ripley. “That way, particularly if you are going into a new area and are about to make an investment decision, you can see whether or not you are going to walk into an IP minefield.”

If your company has secured capital, is featured heavily in the press and has an innovation others envy, your company will undoubtedly be threatened by big fish looking to sue or other players claiming infringement. 

Even if you find your desired research area has some potential risks, knowing the landscape before making an investment decision can allow time to restructure the design or approach of your invention, which may be just enough to avoid any legal trouble. 

Moreover, making those crucial decisions about the most important part of your patent – what it is worth to you, what problem it is solving, and how valuable that solution is – further aids in honing in on your targeted area. 

Remember your Team

Finally, one of the most important components to this process is making sure all employees are evolving at the same rate as the company. 

“Educational sessions for your employees are a smart practice – if your company is growing, it is good to get everyone on the same page,” said Ripley.

As the company transitions into new territory, having a team that is confident, knowledgeable and loyal to core values and ideals will keep progress moving forward, allowing time and resources to be designated to the challenges that loom ahead.