Patent Entitlement: Summary of ThermoChem Recovery International Inc. v FULC JV LLC [2026] APO 14

This decision of the Australian Patent Office concerns four patent applications (owned by FULC JV LLC (formerly filed in the name of Fulcrum Bioenergy, Inc. (Fulcrum)) and a challenge to entitlement brought by ThermoChem Recovery International, Inc. (TRI) under section 36 of the Patents Act 1990 (the Act). TRI sought entitlement, either wholly or jointly, to rights in the inventions disclosed in the applications.

The applications relate broadly to technologies for converting waste materials and other carbonaceous feedstocks into Fischer–Tropsch (FT) liquids and transportation fuels, with an emphasis on producing fuels containing a high proportion of biogenic carbon. Described within the applications are various systems, processes and products associated with feedstock preparation, gasification, processes for treatment of syngas and fuel production.

Background to the Dispute

Four Australian patent applications were filed between 2021 and 2024. In 2025, ownership was transferred from Fulcrum to FULC JV LLC by assignment. Before that transfer, TRI had filed entitlement challenges arguing that the inventions were derived from technology jointly owned by TRI and Fulcrum under a commercial agreement entered into in 2013.

Claims of the Applications

Broadly speaking, the claims fall into four categories:

1. Feedstock-processing technologies that separate Municipal Solid Waste (MSW) and selectively recover biogenic carbon while removing non-biogenic carbon and inert materials.
2. Integrated waste-to-fuel systems involving gasification, syngas conditioning, Fischer–Tropsch synthesis and fuel upgrading.
3. Methods for producing high-biogenic-content Fischer–Tropsch liquids wherein the liquids are derived from MSW.
4. Fuel products derived from renewable feedstocks and retaining high biogenic carbon content.

Legal Principles

Entitlement under s36 of the Act requires that

(1) If:

 (a) a patent application has been made and, in the case of a complete application, the patent has not been granted; and

 (b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and

 (c) the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent:

 (i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or

 (ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;

the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.

Accordingly, s36 requires a party to establish that it is an “eligible person” within the meaning of s15 of the Act, wherein an eligible person:

(a)  is the inventor; or

 (b)  would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

 (c)  derives title to the invention from the inventor or a person mentioned in paragraph (b); or

 (d)  is the legal representative of a deceased person mentioned in paragraph   (a), (b) or (c).

The decision in this case relies heavily on authority from cases such as University of Western Australia v Gray and Polwood Pty Ltd v Foxworth Pty Ltd. According to these authorities, determining entitlement generally requires three steps:

1. Identifying the inventive concept disclosed in the specification.
2. Determining inventorship, including who conceived the inventive concept.
3. Determining whether contractual, fiduciary or other legal relationships transfer ownership rights in the invention. [i] [ii]

TRI’s Case

TRI’s argument centred on a 2013 agreement between TRI and Fulcrum. TRI contended that the patent applications contained “Combination Technology” as defined in that agreement. According to TRI, the agreement provided that any such technology, and any corresponding intellectual property (IP) rights, would be jointly owned by both parties.

TRI relied on contractual provisions identifying “Combination Technology” to include IP to a gas clean-up system and a Fischer–Tropsch system, and any IP created from such jointly developed technology would be owned equally by both parties. TRI argued that because each patent application included claims relating to Fischer–Tropsch systems and associated processing technology, being built upon TRI’s gasification technology, partial ownership should vest in TRI.

Why TRI Failed

The delegate identified several weaknesses in TRI’s case.

Failure to identify the inventive concept

The delegate determined TRI was unable to clearly identify what inventive concept in the patent applications allegedly belonged to it. General references to a “Fischer–Tropsch system” and a “gas clean-up system” were considered vague descriptions of known technologies and industrial processes, rather than clearly defined inventive concept.

Without a clearly articulated inventive concept, the delegate could not determine whether TRI had contributed to that invention or had any entitlement to it. The delegate stated that attempting to identify the alleged inventive concept on TRI’s behalf would amount to speculation.

Insufficient/improper evidence

Another major problem was evidentiary. The delegate found that parts of TRI’s evidence in reply introduced new factual points rather than responding to FULC’s evidence in support. As a result, significant portions of TRIs evidence could not be relied upon.

The delegate further observed that there was effectively no evidence establishing how the inventions disclosed in the patent applications corresponded to the contractual definition of “Combination Technology”.

Contractual uncertainty

The delegate also noted a further weakness in TRI’s contractual argument, notably that the ‘Combination Technology’ was specifically tied to a licence agreement relating to the “Sierra Project”. However, TRI provided little explanation regarding the relevant licence agreement or how the patented inventions fell within the scope of that project-specific contractual arrangement.

Decision

The delegate concluded that TRI failed to establish that it was an eligible person entitled to ownership of any invention disclosed in the four patent applications. The evidence did not adequately identify a relevant inventive concept, did not demonstrate that the applications contained jointly owned technology as alleged, and did not show that the contractual arrangements gave TRI ownership rights in the claimed inventions.

Accordingly, all four s36 requests were dismissed. No declarations of entitlement were made, and ownership of the applications remained with FULC JV LLC.

Key Takeaways

• It remains that establishing entitlement to ownership of an invention depends upon:
  • Identifying the inventive concept disclosed in the specification.
  • Determining inventorship, including who conceived the inventive concept.
  • Determining whether contractual, fiduciary or other legal relationships transfer ownership rights in the invention.
• Evidence in reply before the patent office should be just that – evidence which directly addresses to the previous round of evidence filed in the matter. It is not permissible to utilise evidence in reply for the purpose of introducing new matters (which should be included in evidence in support); and
• In fields involving continuous or iterative development of IP rights, contractual arrangements addressing assignment of IP should be revisited and updated regularly to mitigate disputes on ownership.

If you have questions about patent entitlement, reach out to MBIP. Our attorneys have experience in entitlement disputes and would be pleased to provide advice.

For further reading on this topic, you may wish to refer to our blog series: Patent Ownership and Entitlement.

[i] University of Western Australia v Gray [2009] FCAFC 116

[ii] Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9