In early 2010, a father told a group of three engineering researchers at Simon Fraser University in Surrey that his son had had a concussion, and asked them if there was any way to enhance helmet performance. They found the topic interesting, and after four years of research and development and patent filing, they founded Shield-X Technology Inc., inventing products to enhance helmet protection and reduce the risk of head injury in sports.
Their Shield-X Membrane, for which the team has been granted a patent, is used to mitigate sharp twisting of the head during impact. Dr. Daniel Abram, one of the patent holders, and the chief technology officer of Shield-X Technology, explains that this micro-engineered layer can be mounted inside or outside the helmet, or embedded in skullcaps to provide additional protection. The membrane acts like an intermediary layer and reduces the transfer of the rotational force to the head during impact.
Dr. Abram and his team applied for patent protection for this technology in Canada and other countries in 2011. As a start-up technology company, Shield-X provides the know-how to manufacturers of athletic equipment through a licensing agreement, rather than manufacturing it themselves. Under this business-to-business model, owning registered patents is the key to get businesses interested in manufacturing their technology, according to Dr. Abram.
"Having a patented technology is very attractive to manufacturers and brands," says Dr. Abram, "the first thing that they ask when they are interested is, ‘Do you have a patent?'"
Having a Canadian patent is crucial
"Before applying for a patent, the first three questions you should ask yourself are:
- Is the technology I am filing for novel and unique?
- What parts of my technology should become a patent, a trademark or a trade secret, respectively?
- What is the future market value of my technology?"
Contact sports like hockey and football are popular in Canada, and the connection between concussion mitigation research and sports like these is strong. Dr. Abram sees these links as a source of opportunity here in Canada, so Shield-X Technology aims to fully protect their technologies with Canadian patents.
Shield-X also recognizes the importance of patents when it comes to dealing with "knock-offs." Dr. Abram says people often think that a patent is simply a sticker to show that a technology is protected. In fact, patents do much more, including giving innovators a critical tool to counter those who infringe on the rights to their technology. Shield-X informed their legal team to monitor any potential copycat in the concussion mitigation community.
The thought process that goes into patent application
With eight years of experience applying for different Canadian patents for Shield-X Technology, Dr. Abram offers his insights in patent application.
The crucial first step is to conduct a thorough literature review to see if the technology is one of a kind. The work involves searching through the Global Brand Database with the World Intellectual Property Organization; the U.S. patent database with the United States Patent and Trademark Office, and Google Patents. Dr. Abram suggests making a full report to identify the jurisdiction of similar technologies and what competitors have done.
"You need to be harsh during the literature review when assessing the uniqueness of your technology. Because you don't want an (patent) examiner to tell you that your technology is not novel, while you have already spent time, energy and money to file a patent," says Dr. Abram.
As soon as the technology is confirmed to be unique based on a literature review, one should start writing a patent application. Dr. Abram stresses that the decision to start writing should be "fast and furious," because innovation moves quickly and can result in a multitude of patent applications all around the world; one technology of a specific kind could be approved for a patent just a few days ahead of your own, making yours no longer novel and putting it out of the patent competition.
"We encountered a situation where a competitor filed a similar application within days from of us. So it's very important to be fast. Wait one hour, one day, and you may not get the patent."
Shield-X Technology enlists a patent agent to support their work in drafting patent applications and drawings, navigating the patent application process, and ensuring legal accuracy and compliance to requirements. Lots of back-and-forth can happen at this stage, Dr. Abram says, as the company explains the technology to a lawyer and modifies drafts.
"Patents are values to us and they create market for us. That's why we spend time and money to file patents to be protected in Canada and around the world."
Are you inspired to protect your products and ideas? Visit the IP for business page on how to develop an IP strategy for success.