Clean, renewable energy sources, like wind and solar, are an essential part of creating a sustainable society. These sources require storage solutions such as lithium-ion batteries, often used in the automotive and consumer electronics industries. Relying on high performance batteries, which enable long lasting energy storage, has become increasingly important in sustainable development.
Nano One, a Canadian technology company based in Burnaby, British Columbia, seized the opportunity to gain a foothold in the battery space by developing new processes to make cathode materials for lithium-ion batteries.
Nano One's intellectual property portfolio
Better battery materials contribute to shorter charge time, longer battery life and increased battery capacity. Nano One has developed and patented innovative processes to produce high-performance lithium-ion battery cathode materials at low cost.
Originally founded as a private company, Perfect Lithium, in 2011, the company later went public as Nano One Materials Corp. in 2015. The company has more than 30 full-time employees working mainly as scientists and engineers with expertise in electrochemistry, lithium battery manufacturing and chemical process engineering. Its current intellectual property (IP) portfolio consists of 16 patents (including process patents) issued in strategic markets around the world. The company name is trademarked in many countries, mainly in Asia and Europe, and is currently pending registration in Canada. It has secured several joint collaboration agreements in the battery materials and automotive industries, including with Pulead Technology Industry Co. and more recently with Volkswagen Group.
The unique position and competitive advantage of licensing
With the battery industry going global, more players want to get involved in the growing field of lithium-ion batteries. To make cathode materials better and cheaper, Nano One took a strategic approach: it protected its innovative process of cathode materials found in lithium-ion batteries, and is negotiating license agreements with other companies that have the supply chain to manufacture these batteries.
"We license the 'ready-made package' to other players so that they do not have to spend years developing their own processes," says Dr. Stephen Campbell, Chief Technology Officer at Nano One.
Securing protection in Canada and abroad
Nano One filed its first batch of six United States (U.S.) provisional patent applications in 2013. Through further innovation and new technology advancement, it filed for more patents in 2015. Since then, the company has been filing an average of 2 to 4 applications a year for the past 4 years. Its latest U.S. patent was issued in October 2019.
Before any filing, Nano One's team of scientists and researchers keep up to date with patent literature and perform online database searches to ensure what it files is new and inventive. A patent agent is also hired to provide Nano One with valuable intelligence when landscaping and to help prepare patent applications.
"Having a very good patent agent working for us is essential, as they have the expertise to help us construct solid patent claims in the application, as well as having access to specific IP databases," says Dr. Campbell.
Nano One is proudly Canadian, and believes that filing for IP rights in Canada is very important. The Government of Canada has been an important partner for Nano One, supporting the company through close to $10 million in non-dilutive government grants (Sustainable Development Technology Canada, Automotive Supplier Innovation Program and National Research Council of Canada Industrial Research Assistance Program).
Aligning an intellectual property portfolio with business opportunities
Identifying opportunities and gaps in the battery industry is the cornerstone of Nano One's thought process when strategically deciding whether to pursue the protection of its innovation.
"Nano One operates under a patent licensing model, therefore obtaining IP protection is essential for us to have freedom to operate. Securing freedom to operate is an essential overarching component to any IP assets strategy and should not be overlooked."
Dr. Campbell recommends thinking through the following when considering protection:
- Is the innovation new and inventive? Identifying novelty and inventiveness is critical before considering anything else.
- Is the innovation enforceable? It is important to make sure that you can differentiate the innovation from others and that you can detect infringement. In case of litigation, the onus is on the patent holder that initiates the proceedings to prove that another party is infringing.
- Can it lead to a licensing opportunity? To align with the company's business model, the innovation must lead to a revenue stream and provide a return on the time and money spent on patenting.
Seeking professional help and not attempting to do everything yourself is very important. "Don't spend money and effort in filing a patent application that is poorly constructed and not enforceable. Seek the help of professionals in both the legal and patent space because litigation matters are complex," says Dr. Campbell.
Finally, growing a company's IP portfolio and considering exporting abroad requires identifying target markets and the timely filings of applications. Consider filing for patent protection through the Patent Cooperation Treaty to streamline the process of obtaining IP rights in countries where you plan to sell your products.
Nano One's ongoing patent grants and new joint development agreements are indications of a promising future for the Canadian company.