A top IP strategy is key to project innovations' commercial impact 6 min read
Future minerals, such as lithium, copper, nickel and rare earths, are critical to many clean energy technologies and the transition to renewable energy solutions. Global challenges, including supply chain security and the push towards net zero, are opening up further opportunities for future minerals in Australia. However, the economic extraction of future minerals, particularly for rare earths, will involve a number of technical challenges requiring innovative solutions.
The key to achieving real commercial impact for project innovations is a well-planned and executed IP strategy. This will ensure IP risks are identified and navigated to avoid project setbacks, and that project IP is properly captured and protected to drive commercial benefits and cultivate a competitive edge.
Key takeaways
- The huge increase in Australian and international patent filings in the future minerals space increases both opportunities and risks, requiring tailored advice.
- It can be difficult to establish systems for capturing, evaluating and securing new IP, but it is crucial that each developed innovation be considered for potential commercial benefit.
- It is imperative to be proactive in mitigating the risks of unnecessary IP disputes with third parties; in developing procedures for promptly identifying and seeking IP protection for innovations; and in implementing clear and comprehensive IP strategies from the outset, to avoid making critical decisions on the run.
The IP landscape for future minerals
As with any commercial project, understanding the industry landscape is a key to success. This includes identifying and implementing strategies to navigate IP held by third parties. As shown in the figure below, there has been a significant uptick over the past 10 years in Australian and international patent filings in the future minerals space, with hundreds of new patent applications being filed.
Source: Derwent Innovation
Figure 1: Australian and international patent filings
This increase in patent filings increases the likelihood of:
- commercial deals and licensing arrangements, as interested parties seek to secure the advantages arising from IP protection for key technological advancements;
- increasing risks of infringement of third-party IP rights and more active enforcement of these rights; and
- IP disputes, as industry players test the boundaries of each other's monopoly.
The three jurisdictions generating the most patent protection in future minerals markets are China, Japan and Russia. However, only a fraction of these patent applications are being filed across multiple jurisdictions. As patents are national rights, the overall impact of this activity on a project will vary depending on the region of interest. For this reason, tailored advice should be sought, to understand the scope of third-party patent protection and how best to approach potential IP hurdles for any new project.
At a practical level, this can include setting up procedures to manage and navigate third-party IP risks by scoping the IP landscape and evaluating how third-party rights could potentially impact a planned project. This process may also provide further commercial awareness and ease investor concerns, which can benefit current and future projects.
Points to be aware of from an IP perspective
Pressures and deadlines within a project can often make it difficult to establish systems for capturing, evaluating and securing new IP, particularly where innovations are only considered to offer minor technological advancement. However, as even minor improvements in efficiency can result in significantly higher returns over the project lifespan – eg from improved product yields, reduced equipment maintenance, reduced energy/water requirements – it is crucial that each developed innovation is considered for potential commercial benefit in current and future projects.
It is therefore important to have the right procedures and policies in place at the outset as part of your IP strategy. This should cover, at a minimum, how:
- IP created in connection with the project will be identified;
- IP will be used / commercialised in current and future projects; and
- IP will be protected / enforced.
While this may appear simple, businesses often leave it too late to work out their preferred position and are then forced to make critical strategic IP decisions on the run: eg only starting to negotiate terms of ownership agreements with collaborating partners after key IP assets have been jointly created.
We set out below three particular issues to be aware of from an IP perspective.
Patent protection
Innovation can take many forms in any resources project, from optimisation of equipment design to new processing techniques and methods. One tool for protecting innovation is to seek patent protection, which can provide significant commercial advantages, including:
- exclusive rights to the innovation for the term of the patent, which can be vital for building and maintaining a commercial advantage over competitors;
- commercial leverage during project agreement negotiations, or for investment or financing purposes;
- proof of technological advancements that distinguish you over competitors; and
- opportunities for licensing or selling technologies to third parties.
The key first step in obtaining these advantages is having the right IP procedures and policies in place, preferably well in advance of any major project milestones. This will provide a framework for identifying and evaluating IP developed over the course of a project and prevent situations where valuable IP is overlooked.
Joint IP ownership
Future minerals projects will likely require deep collaboration between various parties, such as industry partners, research institutions, independent experts and specialist services providers. Hence, it is important for contractual arrangements between the collaborating parties to cover eg:
- what background IP each party will contribute to the collaboration, how such IP may be used by the other parties, and whether any fees would be payable for IP use; and
- how any developed project IP will be owned and used, and how benefits associated with the use of it will be shared.
In particular, collaborating parties should avoid the temptation simply to state that any project IP will be jointly owned, without being fully cognisant of the consequences of doing so. This is because, in the absence of any agreement to the contrary, there are default positions at law that can limit the freedom of any singular owner to protect and exploit the project IP. These default positions may be different depending on the type of IP (eg whether it is a patent, trade mark or design), or the proposed dealing with the IP (eg assigning, licensing, commercialising, enforcing).
The better approach would be for the parties to clearly prescribe the terms of project IP in the agreement, so as to avoid being stuck in a deadlock where none of the joint owners can capitalise on the value of the project IP.
Confidential information
In some instances, it may be appropriate to rely on confidential information or trade secrets as a form of IP protection. However, in these circumstances it is essential to put in place appropriate processes and contractual arrangements, to ensure the relevant information is appropriately catalogued and restricted.
Confidentiality training for employees and contractors should also be implemented, to mitigate the risks of misuse and unauthorised disclosure of confidential information, whether intentional or unintentional.
Overall, working through these procedures and policies is part of sound IP governance for a business.
Actions you can take now
We encourage industry players to think of IP as an essential tool for capitalising the value of your future minerals project and, in particular, to:
- take proactive approaches to mitigate risks of unnecessary IP disputes with third parties (eg by setting up competitor patent watches and conducting freedom to operate searches before commencing major project works);
- develop procedures for promptly identifying and seeking IP protection for any innovations that can be leveraged to provide real commercial advantages: eg innovations that produce higher yields or reduce processing costs, or can be used in commercial licensing deals in return for royalties or working interests; and
- implement clear and comprehensive IP strategies from the get-go, including setting up an IP committee that would be responsible for key IP decisions, and to regularly review and update these strategies as the project moves through its lifecycle.