Tim: There are some things that can be barriers to your development of your technology and the success of your company, but if you have a proactive strategy that's based on trying to protect your commercial opportunities, and you take the right steps to make sure that there aren't inadvertent exposures or disclosures of your technology as you work towards potentially building a patent portfolio, as long as you take proactive steps and understand that those things take resources to try and implement those strategies, go get 'em.
Introduction: Welcome to Cleantech Forward, a Foresight podcast, where we explore cleantech customer's capital and Canada's path to net zero. Tune in to learn more about Canada's most exciting cleantech startups, industry success stories, investor insights and academic initiatives as we accelerate the growth and impact of cleantech, together.
Jeannette: Welcome to Cleantech Forward. I'm Jeanette Jackson, CEO of Foresight Canada. Today I'm talking to Tim Bailey, partner at Gowling WLG and head of the firm's Intellectual Property group in Calgary. Tim and I discuss the state of carbontech innovation in Canada, what tools are available that can enable entrepreneurs to grow their businesses faster and how this will impact the sector as a whole.
This Cleantech Forward podcast is supported by Gowling WLG. A global leader in intellectual property law, Gowling WLG works alongside Canadian cleantech companies to develop IP strategies that maximize business opportunities and increase market share, while protecting valuable innovation. From idea to investment, to international expansion, Gowling WLG understands the potential of your intellectual property at every stage of growth. Visit gowlingwlg.com/cleantech to learn how they can support your business today.
I am joined today by Tim Bailey, coming onto Cleantech Forward to discuss carbontech innovation in Canada and what can be done to enable entrepreneurs and innovators to grow their businesses. If you're not familiar with Tim, he is part of Gowling WLG, which is a full service international law firm. They have a particular top tier and international intellectual property practice and are sponsors of Cleantech Forward. Tim has been part of Gowlings for several years in the Calgary office and specializes in representing high tech oil and gas, cleantech pharmaceutical and bio technology clients. Tim, welcome to Cleantech Forward.
Tim: Thanks very much for having me. I appreciate you guys giving us the opportunity to chat about this really interesting and important topic.
Jeannette: Before we dig into everything carbontech, I want to help the audience get to know you a little bit. Who is Tim? What gets him up every morning? What fills your time on weekends? What sort of special hobbies and interest do you have?
Tim: Okay, great. So Tim wears two hats in life. One is the professional hat and then the other, like may other people, is I'm a family man. I have a wife and I have two young children, 6 and 9, and so a lot of my free time is dedicated towards trying to help my wife with the way our life is organized, which is quite busy, as it is for a lot of people with young kids. The other hat I wear is my professional hat. So I am, as you mentioned, I'm a lawyer. I'm also a patent agent and a trademark agent. My practice focuses on technology in general. As you mentioned, Jeannette, I'm in the Calgary office and here I'm the head of the IP group and my practice really focuses on a couple of buckets of types of work. One is as a lawyer. I spend a fair amount of my time helping my clients, whether it's a startup, a mid-size company or a large publicly traded company, help them figure out what their contracts and price and obligations are with respect to other parties that they're in commercial relationships with. So licencing, collaboration agreements, that type of stuff. As a patent agent you mentioned some of the areas of industry that I work in, oil and gas and bio tech, is kind of a broad spectrum of different industries that I work in. In the last few years really been trying to focus on getting more involved in the carbon / green tech industry. So when I wear my patent agent hat it's drafting patents, applications for clients and helping them create a global strategy for protecting their technology and the commercial opportunities that technology embodies.
Jeannette: Incredible. As your kids get older and you start to see some of the indicators of climate change, does that get you more passionate about the cleantech space?
Tim: Oh absolutely. Just an anecdotal story. There's a client that I'm working with now, who would fall within the startup category of clients, and initially he had selected another firm to work other than ours. I took it upon myself to send him a note and just say, best of luck. Very interested in your technology and, as a parent, very keenly interested to see how your technology develops because that particular client has a technology that I think could have a great impact on some of the topics we're going to talk about today, and yeah it is because my kids, I don't have grandkids because my children are too small or too young, but ultimately there is a greater sense of responsibility and stewardship that I don't know that we've been taking as seriously, as the human population, being taken seriously as we should.
Jeannette: Absolutely. Building on this let's dig into a little bit more about your connection to carbontech and how you developed an interest in this sector.
Tim: Sure. I think it's helpful always to, in my view, start putting up some boundaries around this discussion. So what do we mean by carbontech? What I mean about carbontech, I think, are trying to find technologies, applications of technology, that help address the anthropogenic carbon content within our atmosphere. The assumption is that as CO2 levels rise, that CO2 acts as a greenhouse gas amongst other gases, and that's causing the climate change crisis. Which is now becoming more and more evident with increased wildfires, the fracturing and breakup of the Artic caps, both in the North and South Poles, and in various parts of the world they're under threat of increased sea levels. So this is a very serious global issue that we need to address. So when we put a box around carbontech as being the technology directly trying to decrease those carbon levels, then there's a variety of different ways that that can be done. So that can be done by trying to decrease the amount of carbon dioxide that humans create. That can be done by trying to capture the carbon dioxide that's already in the air, and that can be done by doing some sort of selective agriculture, so as to increase the uptake by certain plant species. That can also be done by various techniques by trying to use algae in the ocean. That can be done by specific chemistry applications. I think that all of that stuff together will ultimately, my hope is, will ultimately lead to decreasing the actual content of CO2 in the atmosphere, but also along with that will be the technologies that are directed at decreasing the amount of CO2 by some of the major industries related to CO2 productions. So oil and gas industry, concrete industry, those types of industries they are also taking very active parts in trying to modify and refine their processes to decrease that CO2 release at the source. So my interest, again, comes back to our previous discussion which was it has to do with our planet, it has to do with my kids and my family, and having a feeling, a sense that we're starting to go in the right direction to start to hopefully decrease the amount of CO2, and decrease the amount of CO2 by decreasing production and increasing the technology and capabilities to capture back the CO2 that's already in the atmosphere.
Jeannette: Yeah, we've been a big fan of supporting industrial transformation for many years. A lot of people aren't aware of this but Foresight has been running innovation challenges with groups like COSIA, and of course, we just finished a significant Clean Resource Innovation Network, CRIM, series of challenges as well. So 49 challenges over the last 6 years with industry and the goal, once those technologies are deployed, is to reduce carbon dioxide in the magnitude of 69 mega tonnes by 2033. So we really need to support industry. Obviously it's part of our livelihoods. It employs a lot of Canadians, and if Canada can lead on deploying technologies that help these sectors transition to net zero more quickly than our global counterparts, it may be economic opportunity for exporting technology and innovation and knowledge, is just going to be incredible which I think would be a great segue into some of the IP elements of your work. Are there specific challenges around carbontech with regards to IP protection?
Tim: You know that's an interesting question. I think, first instance, acquiring intellectual property protection it's a big topic because some people immediately think of, for example, trademarks. Some people think mainly of patents. Those aren't the only mechanisms available and I think we'll probably get into some of the other mechanisms that are available for people to protect their innovations and technology. But I think some of the particular challenges with respect to carbon technology and IP protection, there's sort of two aspects to that. One being a practical aspect and then the other being the actual technical aspect. So my practical aspect, I mean if we're talking about patent protection in particular, there's a practical challenge that seeking patents is, regardless of the subject matter, is expensive and it's a time consuming process. While a patent itself typically can be enforced 20 years from the date you file, it can take many years from filing, if you actually do receive a granted patent rights. So that in and of itself is a practical challenge for a lot of, particularly startups, and sometimes the companies that would be maybe a 100 employees or less, because there's a lot of resources that have to get directed towards the process in general. The other aspect that I was referring to, being a technical challenge, is because we are literally dealing with the forefront cutting edge of chemistry material sciences, nanotechnology, a whole plethora of different industries and types of technology. Sometimes it can be challenging for clients to find representation, being a patent agent or a patent lawyer, that has the right technical skillset to actually be an add on value add to them trying to secure their patent protection. By that I mean, not merely regurgitating what disclosure the client has provided to describe their technology, but being able to integrate their past experience that might relate to a particular chemical application or, for example, variety of different approaches that they may have already worked on for carbon capture.
Jeannette: I know. It's incredible to see how carbontech is infiltrating its way through so many different sectors and when you start talking about nano materials all the way up to big carbon capture infrastructure, it's really being looked at, at all levels of impact across so many different value chains. It's no wonder there's going to be opportunities for innovators and entrepreneurs to hold on to those problems and address them through really progressive innovation, and to have support from your efforts and your team's efforts at Gowling, when it comes to everything IP. Moving onto a little bit more about sort of the comprehensive IP strategies really required to enable entrepreneurs to grow and scale and their businesses. How do you, as a patent agent, work with ventures to map those things out and come up with a plan that's going to allow them to protect their IP for years to come?
Tim: That's a great question. I think I would actually start with wearing my lawyer hat, rather than my patent agent hat, because if we assume the scenario of a startup, a true startup where people are bootstrapping, trying to pull together some money to start to developing a technology, whether it's in a wet lab or in a garage trying to build some sort of device, I think that the first challenges that are often overlooked by startup companies is, how can they best protect themselves without putting resources, time and money into trying to secure patent applications? So how do they protect their company if they're going to be using a corporate vehicle to bring forward the technology? How do they protect the interest of that company with respect to the friends and families that they may have discussed the idea with? Employees that may be coming in on more of a short term basis but still getting access and exposure to what the innovation is and how it actually works. So part of what we do here, in terms of helping startup technology companies, in particular, in the carbontech space is help them understand what types of agreements, legal agreements, we think are relevant and important for them to have with all the people that have exposure to their technology. So whether that's a non-disclosure agreement for anyone they're going to share aspects of the technology with. Whether that's a collaboration agreement or a joint development agreement, whereby they start partnering with other entities to start building other technology, and employment and consultant or contractor agreements, ensuring it's clear that anyone who's touching the technology, as an employee or contractor of the corporation, that it's clearly articulated how the rights and obligations between those parties apply so that, ultimately, when it comes time for understanding whether a patent application or a series of patent applications makes sense in terms of the strategy, you've already got in place the agreements that address a lot of the issues that come up with a patent, in terms of how does the company have it's rights, who be named as inventors, are the rights secure in the company and has anyone done anything that may put patent rights in peril. So the question with respect enabling entrepreneurs to grow and scale their business, I think the strategy is not just one blanket strategy, file patent, seek protection, you have to implement a strategy. We suggest a strategy that is almost bespoke to the needs of the company at the given time, whenever that initial discussion is, and start setting the stage for when more and more employees may come on board, for example. You would already like to have a version of your employment agreement. What happens for investors and different types of investors, if you get to the point where potentially a VC might be interested in putting in money, then have you already got all the corporate aspects of your company and dealing with issues of maybe earlier shareholders, have you already got that bundled up and clean and tidy so that a VC can focus more on learning about the technology, which is important, rather than trying to asses whether or not they want to make an investment when due diligence could run into a closet full of skeletons they could have addressed ahead of time.
Jeannette: I think that's a great sort of lead in into sort of some of the competitive landscape opportunities and challenges that all ventures face. I think we're all starting to become aware that Canada has an incredible opportunity to lead, in particular on everything carbon capture, utilization and storage related, and when we think of groups like CarbonCure, Carbon Engineering, Carbon Upcycling, I mean the list goes on. How does an entrepreneur approach an IP strategy when there is a competitive landscape? Perhaps more specifically, is there something that they can do to ensure that they're protecting the right piece of IP and not stepping on any other toes here in the Canadian landscape?
Tim: That's another great question and has a couple of different parts to it. So the first part being, what in particular should entrepreneurs do to modify their strategy? I sort of echo the comments I just provided. A strategy has to be one that's realistic and practical to implement with the resources you have on hand. So your time, the amount of capital or funds available to act on in the strategy, and also people and mind. Brain power to make things happen. So that's going to be very much based on the individual entrepreneur and their company's position. One thing we often try to do is we don't want to be simply a law firm, or an IP professional, that is there to get people patents. We want to understand what the company's commercial opportunities are so that we can help devise a strategy that actually properly protects the technology. So that involves building a relationship, and that relationship is important, because it's oftentimes someone can get a patent issued and they'll say, hey I've got this patent and I can enforce this against anyone, stop them from doing whatever. But if you don't understand what the foundational elements of the technology that your technology's based on, your patent might not have the commercial relevance, or scope of protection that you think it might. So that's we why really want to understand what the pressure points from our client's perspective so we understand how their technology has developed in the ways that it has. That gives us so much more clarity as to what the best way to approach a protection strategy, and again, it comes down to what is the state of that entrepreneur at that time. If they already have a suite of documents that everyone's happy addresses ensuring that the rights and obligations of individuals that get access to the tech are covered, and all the rights are flowing to the entity that we want it to, then it becomes a question of so then how do we understand the technology? How do we understand how that technology fits in the landscape? So the second part of your question really addresses how does one get comfort that they're not getting step on the toes of others? So I think there's a few different approaches here. One is that we often perform what are called landscape analysis or searches for our clients. They say, listen I'm interested in doing this, or this is where my technology relates to the subject of, just picking an example, carbon capture and in particular we like to use some compound X and we think it's really useful in carbon capture. So when we have that kind of information we can do searches with some pretty sophisticated software platforms that allow us to generate topographical maps, or heat maps, of a landscape. So from there we can understand, at least from a perspective of what patent applications have been filed within 18 months or more, because a patent application is generally confidential for the first 18 months of its life. So our searches will never identify everything that's not been published yet but we can say to a client, okay here. Let's look at this landscape and the landscape will show areas where there's a number of patent applications around the same topical area, and places where there's white space, or the gaps in the heat map that allow us to say, here's an area that kind of relates to what you're doing and there may be an opportunity to focus there, in terms of getting greater access to a scope of protection for your patent applications.
Jeannette: Yeah, I think your touching on some really critical pieces. Too often we see innovators and venturers not really leaning in hard enough with customers to make sure that they've really understood the problems that they're solving, and the types of technologies, not only at a blue sky broad scale, but when it comes down to actually implementing the technologies and the nuances that will have true operational success and scale up, they have to do customer discovery and they cannot stop that process, even as they navigate building out that IP portfolio. It's an ongoing thing that needs to happen and it's probably pretty important that the fewer assumptions you make, the better.
Tim: Absolutely. Unfortunately, with many industries, the global pandemic has hampered those efforts. Before 2020, or before COVID shut the world down, I'd spend a fair amount of my time doing business to local clients or flying to visit client facilities, and had a great personal relationship with a number of the R&D teams and I'd be able to see the developments as they're occurring. Then we go from the shop to the boardroom and just start mapping out strategy and different applications that make sense to start pursuing. So, yeah, the customer discovery and maintenance of that relationship I think is critical for the value add that an IP professional can give a client, particularly in new spaces or new areas of endeavour, like carbontech, but more generally as well.
Jeannette: I want to lead in to some of the considerations when companies look to expand outside of Canada, do the rules around IP change when companies start to look at export opportunities? Whether it's in North America, to our self, whether it's in Europe, Asia, what do they need to know?
Tim: Sure. That's a great question also. The sovereign nations around the world that have patent offices that grant patent rights, from a very high level there are a lot of similarities. But when you start digging into each different country that you're interested in seeking patent protection, there are nuances that can be quite relevant. So when a client says to us, Tim, I want to get a patent and I think this technology could be relevant all around the world, how much is that going to cost me? Well right away I'll take a moment of pause and say, let's assess again where the technology is, where are your potential competitors and where do you have a commercial opportunity that may arise? Because those are the places that make the most sense to start trying to look at whether a patent protection in that jurisdiction makes sense. Then when you've gone through those steps you typically go from what may be 175 countries down to a probably more realistic may be 5 countries. Then we can start providing specific advice about the differences, for example, between Chinese patent law, and US patent law, and Canadian patent law and Europe. All of those countries have their own patent specific rules. So one start example would be there are effectively two buckets, or two types of jurisdictions, for dealing with prior disclosures. Some are called absolute novelty and others have exceptions to absolute novelty. Absolute novelty means that a patent application, or a patent that's granted in a given jurisdiction, cannot have been publicly disclosed before a formal patent application was filed, covering that subject matter. So what that means is if you have filed a patent application it could very well go through and become a granted patent, however, if this is in absolute novelty jurisdiction and you attempt to enforce that patent through litigation against a third party, it could be that the third party discovers that there was a prior public disclosure of your technology before you filed your patent application, and that patent could be invalidated. Other jurisdictions like Canada and the US provide certain grace periods; when you can file a formal application if you already have a public disclosure. So that's just one example where you really have to a bit of an understanding as to what the different rules are in different places of the world to make sure that your strategy, as your building it out, makes sense and you aren't effectively shooting yourself in the foot by going to a conference and presenting a paper or a poster or something to that effect, that describes your technology before you file the patent application, because again, that may take the validity of a patent issued in absolute novelty jurisdiction off the table.
Jeannette: I think that's a great ending to our session today. I feel like we could talk about so many more elements of how Canadian companies scale, how they really look at exports and ensure their IP's protected in that process. Before we close off I'm going to connect two more final questions. What are some of the innovations that get you really excited in this space and what advice would you give to an entrepreneur looking to get into carbontech?
Tim: Sure. Thanks again. The things that really excite me are sort of twofold. One that really excites me is when we see big oil and gas companies having a public announcement of a carbon capture technology that's being brought online. So here in Calgary, we're South of the Canadian oil sands, where a lot of people have focused their attention in terms of anthropogenic carbon and I think that it's great that some of these bigger companies are actually taking steps to do what they have to do to help mitigate the impact by reducing their carbon footprint. We're talking facilities that are such massive scale, it's really difficult for us to comprehend how big these places are, but these companies I think if they didn't do it before they've certainly turned a leaf. In terms of coming up with practical ways to reduce their carbon footprint and I think that's phenomenal. The other part of what really excites me are the smaller companies that are focusing on specific technologies. Again, one of the things I really love about my job when I'm wearing my technology and lawyer or patent agent hat is, I get to work with people who are at the cutting edge of their field. So whatever that field is, if it relates to carbon, mitigating the impacts of carbon within our atmosphere, you're dealing with people who are excited about their technology and they're generally very driven and focused. That is something that I can pick up on and it energizes my efforts to help them. In terms of what advice would I give to an entrepreneur looking to get in the carbontech space, I think the biggest thing you've got to do, in my humble opinion, is you have to go into with your eyes wide open. You have to understand that there are somethings that can be barriers to your development of your technology and the success of your company. But if you have a proactive strategy that's based on trying to protect your commercial opportunities, and you take the right steps to make sure that there aren't inadvertent exposures or disclosures of your technology as you work towards potentially building a patent portfolio, as long as you take proactive steps and understand that those things take resources to try and implement those strategies, go get 'em, I think is how I'd finish off. There's a lot of work to be done in the area. A lot of innovation. A lot of white space in those heat maps we generate and I'm just excited to see how humanity, as a whole, will try and solve this problem we've created for ourselves.
Jeannette: Tim, thank you so much for bringing these opportunities, conversations, issues to light on Cleantech Forward. I look forward to talking to you soon. Have a great rest of your day.
Tim: Okay. Thanks very much. Have a great day yourself.
Jeannette: Thanks for listening. Don't forget to subscribe to Cleantech Forward and rate and review the show on iTunes. Join us next time when we talk with Tamara Loiselle, CEO of Synergraze, about etech innovations that are reducing greenhouse gas emissions globally.
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