Our IP Speakers Series, available on the New Ventures BC YouTube channel, focuses on practical intellectual property (IP) topics and complements the AccelerateIP program.
In the first of our IP Speakers Series, IP experts Byron Thom and Julian Ho sat down to discuss intellectual property strategies, real-world wisdom, and practical tools to protect your startup’s assets.
The pair discussed Clarius Mobile Health as a real-world example of IP strategy in action, the IP process and the skills required to navigate it, as well as how to identify market needs vs. technologies abilities.
Highlights from the discussion include:
A key to Clarius’ strategy
Working in the highly regulated medical device sector, IP was clearly going to play an important role in the business. Ho described how Clarius approached its IP strategy before the company had the financial resources to bring someone on in-house.
Clarius’ founder, Laurent Pellisier, was already quite patent-savvy and listed as an inventor on patents from his academic work and from his previous ultrasound business. As the company focused on building out its technology. Pellisier decided to hire a Master’s of Engineering student to work closely with the engineering team and develop invention disclosures that could later be further worked on with outside counsel.
Working with a less expensive resource and external counsel instead of hiring directly in-house allowed the company to get a start on its essential IP strategy without overextending its resources.
As Ho puts it, “patents help build out the moat of defensive assets that third-parties would be looking at and that investors would be looking at.” Clarius knew that from day one.
Identifying where market meets tech
The pair discussed the importance of applying a commercial lens to the patent approach. Ho described how what seems like a fairly small part of the technology stack—like Clarius’ ability to show both the ultrasound image and pictorial representation of the anatomy being scanned—could be valuable in protecting a larger commercial market.
A key part of Clarius’ approach in that sense is ensuring that different divisions of the company are aligned on the intersection of commercial opportunities and patent protections. Ho recounted how, even now that the company is 10-years old and has a 150-person team, Clarius’ CTO maintains close relationships with the sales and clinical teams to ensure that everyone is working towards a common goal and meeting market needs.
The benefit of a lawyer who can “talk the talk”
Unlike Clarius Mobile Health, the majority of startups and companies beginning their IP journey won’t have the resources to hire someone like Ho to work on patents in-house.
With the majority of lawyers still billing hourly, Julian explained that it pays—literally—to have legal counsel that understands the technology and can work as efficiently as possible.
In Ho’s case, armed with a degree in computer science, he was able to understand Clarius’ technology almost from the get-go and cut out a longer learning process.
IP protection is about more than just patents
It’s easy to get caught up in adding patents, but Ho highlighted that IP strategy is broader than that. For example, companies need to ensure that they have appropriate protections in employment contracts, where employees are using company equipment and resources on company time. Ho noted that contracts for third-party consultants should also include such protections, such as previous invention disclosures to avoid overlap with a consultant’s previous work.
Non-disclosure agreements that are digestible but as robust as possible are also an important tool during discussions with third-parties.
Lastly, Ho described how Clarius’ trademarks help protect its brand and ensure that competitors aren’t able to suggest that their products provide similar benefits.
Watch the full video to learn more about the different types of IP protection, how to choose an IP or patent lawyer, and how to develop an IP culture at your company.
Speakers
Our host, Byron Thom: An engineer and lawyer, Byron has practiced at one of the leading IP boutiques in Canada, helping startups and multinationals protect their technologies assets. He’s also a patented inventor who has drafted and prosecuted his company’s own patent application.
Byron is a venture capitalist and board member who works with companies to develop IP strategies and focus their resources on key assets that matter most to the business, investors, and potential acquirers.
Our expert, Julian Ho: Julian is the vice president of legal at Clarius Mobile Health, a medical device scale-up on a mission to enhance patient care anywhere with portable medical imaging. Julian joined Clarius as an employee prior to its initial product launch and has been a member of its executive team as the company grew from pre-revenue to generating over $30 million in revenue annually. He is a licensed lawyer, a patent agent, and a trademark agent who spearheaded IP strategy at Clarius.
