As the world moves towards a greater focus on implementing sustainable technologies, there is greater appetite from universities and government organisations to develop research in the space, and from major industry organisations and investors to invest in its outputs. As a result, cleantech has become an increasingly competitive and popular space for startups. To get off the ground and onto commercialisation pathways, adopting a strategic approach to identify and secure IP is essential.

Get in early – but know what you want

When inventing in the cleantech space, identifying potential IP early in the development process is essential, regardless of whether the end goal is commercialisation.

“The process of protecting IP needs to commence very early on to avoid disclosure that might impact an inventor’s ability to protect a patent at a later stage. Patenting a new development is a common pathway, but the decision to file a patent should be based on a holistic view of the business, including the budget and potential exit strategies, as well as on the nature of the innovation. For some innovations, maintaining trade secrets may be more strategic, particularly for cleantech manufacturing processes or algorithms that are difficult to reverse engineer,” says Griffith Hack Patent Attorney, Dr Mitchell Nothling.

“On the other hand, having a portfolio of registered IP rights creates a valuable tool for inventors to market their startup. The value can be defensive in terms of ring-fencing the technology to provide room for further development, or it can be offensive, to block competitors or to generate revenue or investment. As cleantech innovation is typically a capital-intensive space, a strong IP portfolio comprising patents and trademarks is a valuable tool to attract investment from larger players that will enable translation into the market.”

“While patents can enhance investor confidence, it’s important to remember that investors also evaluate the strength and scope an IP portfolio. A patent that’s easily designed around or that doesn’t cover the commercial product may be less valuable than alternative IP like trade secrets combined with a first-mover advantage. A strategic IP position is the goal, rather than simply accumulating patent numbers.”

Additionally, your IP strategy must ensure that your product is protected not only in its original iteration, but in its final form, particularly if this final version is what will go to market.

“If a startup files a patent application quite early, and the product or process is still under development, it’s really important for them to revisit the relevance of that IP to the final commercial product,” says Dr Nothling. “It’s important than an IP strategy isn’t a box-ticking exercise, but is revisited and refined as the start-up grows to ensure alignment with business goals”.

Though implementing IP in the process of inventing a product or processing is important, IP costs alongside mounting research costs can seem daunting. Inventors must have a strong sense of the kind of value they want from their patent or IP portfolio.

“It’s important that there is a clear business plan in place, and that the inventor has a sense of how a patent fits into that plan, whether to attract investment, to generate revenue directly, or to provide room to develop the technology further,” Dr Nothling concludes.

Allocate and protect ideas

An important step in developing any IP asset is understanding exactly who owns what. Record keeping of this information ensures that inventors, particularly when working in research teams, avoid confusion later in the process.

“Capturing all aspects of an invention’s genesis and development is crucial. This way a research team can accurately map where ideas originated and who contributes to inventorship. It is also important that details of an invention are kept confidential if there is even the potential that a patent application may be of interest. Everyone in the team should be aware of what aspects of their work are confidential. Giving away the secret sauce constrains your options for future patent applications,” says Dr Nothling.

Pursue funding pathways

Funding is of course top of mind for any inventor – and particularly for startups. In Australia’s cleantech space, there are a number of pathways to funding, including revenue through sales, or funding by partnering with industry, exposure from connection and networking, and pursuing government funding initiatives.

Partner with industry

“A core aspect of securing research and development funding is identifying a potential customer that has enough scale to get a startup off the ground,” says Dr Nothling.

“In many cases cleantech research starts in universities, where academic research teams or individuals identify a potential commercial fit for a research discovery. A typical challenge is then for academics to identify potential industry partners whose work shares synergy with the invention, who can help fund the invention, and that might be interested in licensing the technology down the track. Attracting an industry partner by demonstrating how a technology addresses an unmet need is a desirable first step. However, filing a patent application or executing a confidentiality agreement is wise before disclosing specifics to a potential partner.”

Build connections through networking

“The real challenge in the cleantech field is that much of the technology is capital intensive, so the burden of proving a concept before an industry partner will fund it can be considerable. In this field, real-world performance data and a realistic commercial pathway are important to prove commercial viability and to get the attention of investors. This challenge can be bridged by building industry connections through networking, and there are several showcases and events across Australia that give startups this opportunity,” Dr Nothling adds.

Government funding initiatives

“Many startups receive government money early on. Funding support through the Australian Research Council, ARENA and CSIRO fund startup and SME research in a number of areas, particularly for academic-industry collaboration. Specific funding instruments are available in fields such as green hydrogen, CO₂ abatement, and sustainable battery tech, amongst others, so it is worthwhile for cleantech innovators to explore and leverage these options early on. As always, closely consider whether funding applications are kept confidential prior to submission, otherwise they may be considered a self-disclosure of your technology that can impede a future patent application,” says Dr Nothling.

Be wary of regulatory approvals

When creating cleantech products, particularly in areas such as biomanufacturing, it’s crucial to remember that IP and research is not the only thing standing in the way of selling your product – in many cases, regulatory approvals must also be secured.

“Regulatory approvals have their own timeline and information disclosure requirements. An inventor might find they’ve expended time and money on developing a business plan and IP portfolio, and end up with a product that isn’t acceptable to sell in a key target market, such as the USA,” Dr Nothling warns.

Consult an IP firm

When pursuing commercialisation and designing an IP strategy, consulting a patent attorney with experience in your technology is a beneficial step. Experts in the field can ensure you’re on the right path not just locally, but also to understand its potential in global markets.

“When considering taking your invention that step further and bringing it into the global market, the assistance of an experienced patent attorney can be invaluable. From international patent searching and market clearance, to filing overseas patent applications, engaging an IP firm early can assist in shaping the strategy of a startup.   The cleantech developments within Australian start-ups is world class, and with the right IP strategy in place, there’s no limit to their success” Dr Nothling concludes.

Dr Mitchell Nothling is based in Melbourne, Australia. Access his contact information here.