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From lab to pilot: tips for start-ups and early-stage ventures
In the wake of the recent announcements, Australia is at a pivotal moment in clean technology development, driven by aligned international and domestic initiatives. In this series, our team explores the opportunities and steps companies need to be aware of to ensure they protect and maximise their intellectual property.
While the Australian Government's "Future Made in Australia" (FMA) agenda signals intent to transform the local cleantech manufacturing and value-add processing industries, the recent Australia–US Critical Minerals Agreement appears set to increase support.
Under the Agreement, which covers sustainable mineral processing, clean hydrogen, battery technologies and other areas, Australian suppliers of critical minerals will be treated as domestic suppliers under the U.S. Defense Production Act, unlocking US support and investment under programs like the Inflation Reduction Act (IRA).
These initiatives represent a significant opportunity for Australian tech start-ups. Enormous funding opportunities are now available which are long overdue, and Australia is a critical minerals focal point of the world that is primed to become an industry leader – if we can learn to leverage our natural advantage.
Several technology areas stand out for Australian industry as strategic opportunities, including:
- critical minerals extraction and down-stream processing
- advanced materials manufacturing such as high purity alumina or high purity silica, and
- battery materials and related technology.
For early-stage start-ups in these sectors, protecting your IP might appeal as something you can do later, but early protection is essential to securing profits and commercial opportunities later.
We've set out some key considerations, tips and some of the common traps that can undermine your innovation ownership, and thereby your ability to commercialise.
Why file before the pilot (and usually before the press release)?
To be patentable, an invention must be novel and inventive compared to publicly available knowledge. Public disclosure of an invention will often invalidate any later-filed patent applications.
A well-timed initial filing:
- secures an early priority date (i.e., the date of filing of a patent application)
- plants your flag in a crowded technology space and enables you to carve out and protect a niche in the field
- supports grant, funding and investment applications, and
- underpins investor due diligence, offtake discussions and JV negotiations.
Whether developing a brand-new intellectual property portfolio or expanding a pre-existing portfolio, priority date is king.
DO NOT wait for a full pilot data pack, it gives competitors the opportunity to file first with a conflicting invention, limiting you to designing your commercial product around their patent.
Additionally, a well-timed provisional application can be used as leverage to unlock additional funding sources or drive commercial partnerships that may accelerate your commercialisation activities.
What is patentable at the lab stage?
Even before scale-up, potential protectable subject matter has already likely been developed. Patents are typically directed towards:
- new compositions
- processes for making them
- apparatus, and
- uses of each of the above.
Your invention may lie where a particular material, apparatus/set-up, or new use of a material confers an improved performance or property.
You rarely need a full working prototype to lodge a high-quality first filing.
What to aim for in a first filing
- Reproducible benchtop processes that yield the claimed composition or intermediate
- Early performance or quality signals that correlate with the advantage you assert (e.g., reduced impurities, improved efficiency or yields)
- Comparative examples against your nearest internal baseline or a sensible industrial benchmark, and
- A plan for further data to include in a complete filing.
How we can help
Guiding and advising organisations through the protection process is what we do every day. Our chemical and engineering teams across Australia and the Asia Pacific are highly experienced and have expertise covering a wide range of technical areas.
We help both growing and experienced teams to:
- identify potentially patentable subject matter, even in early stage results
- identify relevant prior art documents that may impact your future claim scope
- provide strategy advice on when to file a provisional application or what gaps remain in your data for the strongest possible starting point, and
- draft provisional patent applications with the breadth and strength required to support your future endeavours.
If you're developing a technology in this area and are interested in preserving your rights, we can help you to understand the requirements, review your invention to determine patentability, and help you to build a strong intellectual property portfolio.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
