IP Success Spotlight: Solaires
Fabian De La Fente, CEO and Co-Founder of Solaires, is a self-proclaimed “natural-born inventor” and is no stranger to IP. Fabian has been involved in ten company launches and five successful startups, and has numerous patents to his name. Sahar Sam, Solaires’ CSO and Co-Founder, developed one of Solaires’ foundational patents while at the University of Victoria and set out to build a company around her invention. Fabian and Sahar were kind enough to share their IP process with me.
Fabian’s IP Process
Fabian’s substantial startup experience has led him to develop a tried-and-true IP system that he applies to every new venture. The first step in Fabian’s IP development process is to conceptualize the company’s IP. Fabian emphasized that you don’t need a prototype to file for a patent - having a good idea or concept can be enough to get the ball rolling. His next step is to file as many relevant patents as he can as quickly as possible. He then builds a team to bring his concept to life and commercialize it. Finally, he waits for the right moment to exit via acquisition, and then it’s on to the next big idea.
Of course in practice things don’t always go to plan! It took Fabian years to develop his process. He started his first company while living in Mexico. He knew even then that obtaining patents on his company’s smartboard hardware would be important to its success, but the $5,000 he was quoted to file a patent wasn’t in his budget at the time.
When Fabian moved to Canada and launched his next startup fourteen years ago, he was determined to find a way to protect his innovations. Fabian stresses that for hardware companies, having as many patents as possible is critical. Of course, that comes with associated costs. He recommends filing numerous patents as inexpensively as possible. To accomplish this he often files U.S. provisional patent applications, or files first in the UK where application fees can be deferred until he’s ready to have his patents examined. These low-cost strategies also provide him with more time to decide whether or not to pursue a particular application. He typically files numerous applications at the outset and then whittles them down over the next three or four years as the technology is developed and the company develops a better sense of which patents will add the most value. There’s no shame (or further cost!) in abandoning a patent application if pursuing it no longer meets your business objectives. Fabian has also filed patent applications and then abandoned them in order to create “prior art”, or publicly disclosed information, that then serves to block others from obtaining patents on the same innovation, ensuring that the technology will be available for all to use.
In order to help lower the costs involved in hiring patent agents to prepare his applications, Fabian set out to partner with a Canadian patent agent who understood the unique circumstances that startups face, and who would be open to working with him to help keep patenting costs down. He succeeded, and the partnership he developed not only helped him obtain numerous granted patents, it also allowed him to increase his patent knowledge and become skilled at drafting patent applications himself. Along the way Fabian discovered that he really enjoyed the challenge of protecting his inventions - so much so that he even took a two week course for patent agent trainees to help him refine his application writing abilities. He’ll typically write and file the initial drafts himself and then consult with a patent agent once he determines that he wants to move the application through the prosecution process. (Fabian is quick to caution against writing your own application, particularly the claims, if you don’t have sufficient experience.)
Solitaires’ Approach to IP Costs
Fabian also keeps costs down by omitting prior art searches before filing, stating that this also helps inventors on his team avoid misconceptions about which aspects of their work can be patented. (Fabian highlights that inventors and patent examiners often have different definitions of what’s obvious, with inventors often wrongly assuming that they haven’t come up with anything patentable.) He thus relies on the patent examiner to do the searching and dig up any relevant information. In order to counter potential novelty objections however, Fabian does ensure that the patent descriptions he writes are extremely comprehensive - often more than 50 pages long - so that there’s something to fall back on in the patent claims if the examiner finds relevant prior art that knocks out the initial claims.
Fabian and Sahar met when they both worked at the same company before launching Solaires. Sahar had developed the foundational solar module IP while working on her PhD and as a postdoc at the University of Victoria, with the university filing the patent and initially owning the IP. Knowing that she wanted to become an entrepreneur, Sahar successfully negotiated with the university to have the patent assigned to her. She then teamed up with Fabian to launch Solaires, with both agreeing that IP would be a driving force in the company’s success.
Working with a University
Sahar suggests that anyone developing IP in conjunction with a university try to file any resulting patents themselves in order to avoid the lengthy assignment negotiation that she went through. She also underlined the importance of having mentors who can help decipher the “legalese” in contract assignments, as well as provide advice with respect to IP. If owning the patent isn’t possible from the outset, she suggests speaking with the university’s IP lawyers as early as possible in order to understand the steps necessary to have the patent assigned in the future. This is crucial to help make informed decisions about the business.
Like Fabian, Sahar was also interested in learning as much as she could about IP, and she took advantage of the numerous free resources available to educate herself about the different types of IP and about IP strategy development.
Taking Advantage of Available Resources
Solaires also takes advantage of the IP support that is available in Canada’s innovation ecosystem. With the help of Foresight, a cleantech accelerator, their team developed a patent landscape overview that helped them suss out the global market for their technology and develop a patent pathway to commercialization. Solaires is also a member of the Innovation Asset Collective, which works with clean tech companies to create a cleantech patent pool that can act as a defensive tool to help protect members from litigation, acting like a patent insurance policy. Fabian is quick to point out that Solaires is very vocal about their patenting policies and activities in the hopes that this, along with their strong patent portfolio, will help deter “patent trolls”, entities that own patents for the sole purpose of extracting licensing fees from often unsuspecting innovators. Solaires also ensures that employees are aware of the importance of IP and that potentially important innovations are brought to the attention of the leadership team, whether they be potential patents or trade secrets. Sahar emphasizes that Solaires’ IP strategy includes maintaining some core technology as a trade secret, and as a result it’s important to frequently remind employees about the importance of maintaining confidentiality. These reminders are especially important when team members are participating in meetings with outside stakeholders. Solaires employees are also provided with regular IP training that includes innovation capture and patent timing considerations. I had the privilege of meeting the amazing Solaires team when I provided them with IP training on these topics through their acceleration with ventureLAB.
It’s Not Just About Patents!
Fabian also emphasized the importance of other forms of IP such as trademarks and domain names. Once his patent strategy is set out he creates a company logo, ensures that trademark applications are filed and that all relevant domain names and domain name extensions (such as .ca, .com, etc.) are locked down for all relevant jurisdictions. For example, Solaires is pursuing over ten trademark registrations in Canada, the US, Germany, Japan, Korea, Australia and the European Union as these jurisdictions will be important to its global success. Solaires’ trademarks cover not only the company name but also product names and other relevant terms; to date trademark applications have been filed for Solaires, Solar-Ventures, MorphoColor, Solar Ink and FlexCell, to name but a few.
Solaires has numerous IP assets to manage, and Fabian and Sahar expect that future joint development opportunities and the commercial manufacturing of the solar ink will involve licensing Solaires’ patents, with bespoke licensing arrangements being required as new partnerships are formed. They plan to create an in-house IP team and have already onboarded an IP Asset Manager to keep tabs on Solaires’ IP assets and ensure that the IP portions of their data room is kept up to date. Fabian reports that investors do scrutinize the IP, but questions are usually kept to a minimum when they see that the company has a comprehensive IP Strategy, with most questions focussing on the budget and wanting to know how funds will be allocated to IP. As an angel investor himself, Fabian is disappointed when hardware companies seeking investment don’t have their patenting strategy figured out.
Fabian and Sahar’s interest in IP and willingness to go the extra mile to ensure that their inventions are patented have greatly contributed to Solaire’s success. If you’d like to learn more about IP check out our IP blog series. ventureLAB clients and alumni also have access to free IP Strategy development support - you can reach out to me at jpharand@venturelab.ca to find out more.
About Solaires:
Solaires is a solar ink manufacturing company founded by co-founders Fabian de la Fuente, CEO, and Sahar Sam, CSO. Solaires has created a perovskite-based solar ink film that is light and transparent, and which can be used in spin-coating, blade coating, slot die and inkjet applications. Solaires licenses patents from University of Victoria, has several patents assigned to it, and has filed an additional 25 patent applications to date with plans to pursue approximately 19 more in the future. Solaires has 21 FTEs and has raised over $6M in equity and non-dilutive funding and has $50K in revenues to date. Sahar Sam, CSO and co-founder, and Shima Alagha, Technology Transfer Manager, participated in ventureLAB’s Tech Undivided program.
About ventureLAB:
ventureLAB is a leading global founder community for hardware technology and enterprise software companies in Canada. Located at the heart of Ontario’s innovation corridor in York Region, ventureLAB is part of one of the biggest and most diverse tech communities in Canada. Our initiatives focused on raising capital, talent retention, commercializing technology and IP, and customer acquisition have enabled thousands of companies to create over 4,500 jobs and raise more than $250 million in investment capital. At ventureLAB, we grow globally competitive tech titans that build-to-scale in Canada, for global markets.
About Josée Pharand
Josée is passionate about intellectual property and loves helping founders protect their IP. Before joining ventureLAB she served as a Director for Canada’s Innovation Superclusters Initiative and was responsible for the program’s intellectual property framework. Josée has a Bachelor’s of Applied Science in Mechanical Engineering and spent several years in the private sector before joining the Canadian Intellectual Property Office (CIPO), where she found her true passion in intellectual property and innovation. Highlights of her thirteen years at CIPO include representing the Government of Canada in negotiations on international patent harmonization and working to implement the Patent Law Treaty.
