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First Canadian Patent Collective Aimed at Cleantech - Now Open for Business

April 15, 2021

By Isi Caulder and Justin Philpott

The Innovation Asset Collective (“IAC”) officially launched on December 9, 2020.  The IAC is a membership-based, federally funded, patent collective – the first of its kind in Canada. With $30M CAD in federal support spread over the next four years, its mandate is to help Canadian small and medium-sized enterprises (SMEs) in the data-driven clean technology sector make better use of their innovations.

Much like patent collectives implemented in Japan, South Korea and France, the IAC aims to provide its members with business, legal and technical support regarding patents. The IAC is attempting to leverage the benefits of a “collective model”, namely reducing patent licensing costs, promoting patent commercialization, promoting domestic patent protection in Canada, and encouraging intra-industry cooperation.

IP and data are the most valuable assets of many cleantech and data-driven SMEs. According to the Canadian Intellectual Property Office (CIPO), SMEs that own IP are 60% more likely to be high-growth SMEs and four times more likely to export. However, according to the IAC, Canadian cleantech companies own less than 0.7% of global patents in the industry sector. That is, while Canadian cleantech companies are generally R&D-driven, many are not effectively leveraging their intellectual property. This state of affairs can impact long-term growth and ability to scale within a global marketplace.  

IAC MEMBER PROGRAMS

As noted on its website, the IAC will provide its members with four key programs:

  1. Education Platform & Services

The IAC offers an educational IP curriculum and customized advisory services that include entrepreneurial supports not solely limited to IP. One of the stated goals of the education program is to raise its members’ level of knowledge to allow for better work with IP service providers.

2. IP Patent Generation

A successful IP strategy is critical for businesses to maintain their competitive advantage as they grow. The IAC provides financing and funding to subsidize patent filings and IP portfolio creation for its members. The IAC operates a quarterly grant of $100,000 CAD which it allocates to its members to cover costs associated with patent filings.

3. Freedom to Operate

The IAC purchases and licenses patents on behalf of its members. By providing “access” to these patents, it gives its members freedom to operate without fear of infringement. Members maintain control and ownership of their own IP. Under this program, the IAC’s aim is to reduce IP-related impediments to Canadian innovation.

4. IP Intelligence & Prior Art

The IAC provides its members with access to a Prior Art Library “for both defensive use and to increase the quality of members’ patent filings”. This library will be continually refined to assist IAC members mitigate against litigation threats, specifically those from large foreign non-practicing entities.

BECOMING A MEMBER

The IAC is currently accepting members. While membership fees are a work-in-progress, initial indications are that the annual fee will be roughly $15,000 CAD. A tiered model, with less expensive memberships, is currently being investigated. IAC membership fees may be subsidized by government funds.

LOOKING AHEAD

As the IAC is in its infancy, precise membership criteria and service offerings details are yet to be fully formulated. There is currently no definition as to what business qualifies as “data-driven cleantech”. Nor is there a precisive size limit for SME qualification. We will closely monitor the IAC’s progress as they continue to rollout member services, clarify membership criteria, and expand their membership base.

In a global economy driven by IP and data, the IAC aims to provide Canadian cleantech companies with a much-needed push in the right direction. The $30M CAD in federal funding is indicative of a larger national IP strategy and evidence of the government’s support and commitment to foster IP growth for Canadian companies.

For more information, or if you have questions about this initiative, please feel free to contact a member of our Cleantech practice group.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

Author(s):

Isi Caulder Isi Caulder
B.A.Sc. (Eng. Sci.), M.A.Sc. (Elec. Eng.), J.D.
Partner
416.957.1680  email Isi Caulder
Justin Philpott Justin Philpott
B.A.Sc. (Env. Eng.)(Hons.), M.A.Sc. (Env. Eng.), MBA, J.D.
Associate
416.957.1183  email Justin Philpott