CSIRO v Tianqi Lithium Kwinana Pty Ltd [2025] APO 42

(i) identify the "inventive concept" of the invention; > > (ii) determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and > > (iii) determine how contractual or fiduciary relationships give rise to proprietary rights in the invention.

1. Further FCAFC decisions including most notably Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, ("Polwood") Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224 ("SARB") and Kafataris v Davis [2016] FCAFC 134 ("Kafataris") have developed how steps (i) and (ii) should be carried out. Fourteen such principles were summarised by Jagot J in Vector Corrosion Technologies Limited v E-Chem Technologies Ltd [2022] FCA 188 at [17]. Nevertheless, the parties conceded during the hearing that there were a myriad of possible inventorship scenarios which did not necessarily correspond to the fact patterns of the available authorities. In my consideration I shall refer to the authorities which I consider most apposite to the facts of the present case.

1. The onus of proof for the purposes of s36 typically initially falls on the requestor. As noted in Woodside Energy Limited v Richard John Moore [2018] APO 82 at [37], the requestor bears the onus to prove their case on entitlement on the balance of probabilities. However, the evidentiary burden may shift under some circumstances, especially when knowledge of relevant facts lies particularly with one party or the other; see Dunlop Holdings Limited's Application [1979] RPC 523 at 542 to 544.

1. The Requestor's evidence in support consists of a declaration by Dr Robbie McDonald dated 11 June 2024 (McDonald #1) and was accompanied by Annexures RGM-1 to RGM-32.
2. The Applicant's evidence in answer consists of a declaration by Dr Paul Miller dated 9 September 2024 with Annexures PCM-1 to PCM-6, as well as a declaration by Dr Elizabeth Maree (the first named inventor) dated 10 September 2024 with three "confidential annexures" SEM-1 to SEM-3. I note that the Applicant explicitly waived the need to keep these annexures confidential in a letter dated 15 November 2024. The Applicant's evidence also included a declaration by Richard Baddeley of Wrays dated 12 August 2024 along with Annexures RHB-1 to RHB-9, however this was not relied on in the hearing.
3. The Requestor's evidence in reply consists of a declaration by Dr McDonald dated 13 June 2025 (McDonald #2) accompanied by Annexures RGM-33 and RGM-34

1. I have derived the following sequence of events from the testimony of Dr McDonald (the alleged co-inventor) and Dr Maree (the first named inventor), both of whom are well placed to provide evidence relating to conception of the inventive concept.
2. On 23 May 2016, Dr McDonald, who was (and still is) an employee of the Requestor, was visited by Dr David Maree,[3] at that time an employee of a company named MSP engineering,[4] who was conducting research for Chengdu Tianqi Industry Group[5] regarding plans to build a lithium refinery at Kwinana, WA, and the desire to recover aluminium from the aluminosilicate waste that would be produced when lithium is extracted from the spodumene ore that would be processed at the facility.[6] Dr David Maree initially asked Dr McDonald to investigate a sulphuric acid leach on the residue[7] and the Requestor entered into a Consulting Services Agreement[8] with MSP Engineering on 1 July 2016. Notably, in clause 5.5 of the Consulting Services Agreement, the Requestor explicitly retained ownership of IP created as part of the services (subject to a non-exclusive royalty-free license). Item 2 of the attachment to the agreement set out the services as an initial test with sulfuric acid, but that "[b]ased on the outcome of the initial test, subsequent tests may be undertaken using other conditions ..."
3. On 21 July 2016 Dr McDonald reported a leach of only 20.5% of the aluminium in the residue provided for testing.[9] After discussing other approaches with Dr David Maree including other acids or milling, Dr McDonald suggested on 28 July 2016 to "have a look at caustic soda digestion instead, given I expect the residue to be refractory to acid".[10] Dr David Maree agreed to this, and on 5 August 2016 Dr McDonald reported that the caustic soda extraction was less successful than the acid leach but that he believed that a phase transition had occurred.[11]
4. On 23 August 2016 Dr McDonald reported to his colleagues that a phase change to hydroxycancrinite (a zeolite) had occurred and that that this zeolite phase should be soluble in acid.[12] In the same email Dr McDonald stated that "beta-spodumene should be leachable in caustic soda to generate LiOH(aq) + zeolite under the right conditions. The zeolite can then be extracted in acid (prefer HCl or HNO3) to generate amorphous silica and AlCl3(aq). There is a patent that talks about the first step but anything further requires a proper search"[13]
5. On 24 August 2016 Dr McDonald reported an aluminium extraction of almost 100% to Dr David Maree, who indicated that he would discuss this "excellent news" with MSP and Tianqi.[14] Dr McDonald recalls a meeting with Dr David Maree and Phil Thick (the General Manager of Tianqi Lithium Australia Pty Ltd ("TLA")) on 28 September 2016[15] following which Mr Thick executed a NDA[16] with CSIRO on 11 October 2016.
6. Subsequent to this, a Research Agreement[17] was executed between TLA and CSIRO on 30 November 2016. The "Background" to this agreement includes, inter alia, the following statement:

"CSIRO Mineral Resources was asked to examine approaches to the recovery of this aluminium and from a set of three "scoping" tests was able to develop a two-stage process that allows near quantitative recovery of the aluminium.

The "scoping" tests conducted identified the caustic conversion (at 250°C) of the spodumene leach residue to produce a zeolite that can be represented by an equation such as the following:

3HAlSi2O6 + 4NaOH + 4H2O ➔ Na4(AlSiO4).OH.H2O + 3Si(OH)4 (1)

Here the excess silicon dissolves; more particularly at this temperature any quartz present is also dissolved. In order to minimise the amount of dissolved silicon the presence of added aluminium is required, and notably will utilise a portion of the caustic soda:

3NaAl(OH)4 + 3Si(OH)4 + NaOH ➔ Na4(AlSiO4)3OH.H2O + 11 H2O (2)

The zeolite produced by caustic treatment can then be dissolved in acid, e.g. hydrochloric, enabling the aluminium to be dissolved:

Na4(AlSiO4)3OH.H2O + 13HCl ➔ 3AlCl3 + 4NaCl + Si(OH)4 + H2O (3)

The aluminium can be recovered from this solution using an approach such as the Altech HPA Process while the neutralised silica residue has also potential value."

1. Dr McDonald proceeded to carry out further research on optimising this process and to keep Dr David Maree apprised of progress.[18] On 24 May 2017 Dr McDonald recalls he met with Dr David Maree who instructed that the project should be wrapped up.[19] In an email[20] of the same date, Dr McDonald reported to his colleagues that "The parent company has a narrow view on IP and has indicated that the IP from this project is of no use to them because they don't own it outright ... the idea of producing zeolites (and presumably other ideas generated by what was formerly MSP) has without the prior knowledge of Tianqi Lithium Australia been allocated by the parent company to other researchers within Tianqi."
2. Dr McDonald completed a final research report[21] and communicated it to Dr David Maree on 15 August 2017.[22]
3. While Dr McDonald was engaged in the second project, Dr Maree (the first named inventor) returned to work after a two-year career break[23] and was appointed by Phil Thick as Research and Development Manager at Tianqi.[24],[25]
4. She recalls she was engaged on two key projects at that time: investigating making zeolites from TAS[26] and generating high quality alumina from TAS.[27] She believes that in 2016 she had been informed verbally by her husband that "CSIRO undertook exploratory, lab work in 2016 which showed that zeolite materials could be produced from TAS using high temperature caustic leaching procedures".[28] Upon commencing her position in 2017, she recalls reviewing published literature on how to make zeolites from fly ash (an aluminosilicate-containing waste product from coal) using caustic soda in order to adapt this approach to TAS.[29]
5. Dr Maree recalled that the two project streams merged in mid-late 2017 as by that stage it had become apparent to her that neither direct acid leaching of TAS for alumina nor production of zeolites was feasible, but acid digestion of zeolites to produce high quality alumina would be more cost effective.[30]
6. To this end, Dr Maree commissioned two further companies, TSW Analytical and ALS, to conduct research on acid leaching of TAS which proved fruitless,[31] followed by efforts to generate zeolites from TAS with caustic soda[32] and finally acid leaching of those zeolites.[33] It was at this point, late 2017, that Dr Maree found that precipitation of aluminium chloride from the leach solution was affected by co-precipitation of sodium introduced during the caustic soda treatment, which made it unfeasible for production of high quality alumina.[34]
7. Dr Maree addressed this by developing an ion exchange approach in which sodium in the zeolite was exchanged with ammonium ions, and volatile ammonia was then removed by roasting. This then enabled acid extraction of high purity aluminium chloride which could then be used to generate high quality alumina without sodium contamination.[35] This research occurred between approximately October 2017 and February 2018, when the final report (SEM-3) was delivered.
8. The earliest priority document of the contested application was filed by the Applicant on 2 February 2018, disclosing

"a process for extracting values from lithium slag comprising: > > (a) hydrothermally treating lithium slag with an alkaline aqueous solution at selected temperature and duration; > > (b) performing an ion exchange step on the alkaline treated lithium slag; and > > (c) recovering values selected from the group consisting of aluminium compounds, silicon compounds and compounds containing silicon and aluminium"[36]

1. The key timepoints from marrying these narratives are:

Dr David Maree (MSP on behalf of Tianqi) engages CSIRO (Dr McDonald) to investigate aluminium extraction from aluminosilicate residue, initially with acid leaching.

Consulting Services Agreement between MSP and CSIRO to carry out leaching tests.

Dr McDonald suggests caustic soda leaching, Dr David Maree agrees.

Dr McDonald reports phase transition to zeolite due to caustic treatment to Dr David Maree.

Dr McDonald reports high solubility of aluminium in two-step (NaOH followed by HCl) process to Dr David Maree.

Dr David Maree reports CSIRO success in converting TAS to zeolite to Dr Maree.

Research agreement between Tianqi (Phil Thick) and CSIRO to further develop the two-step process.

Dr Maree employed at Tianqi by Phil Thick, researching methods of converting TAS to zeolites.

Dr Maree commissions research on acid leaching of TAS, conversion of TAS to zeolite with caustic soda, acid leaching of zeolite, and precipitation of aluminium chloride

Dr David Maree directs CSIRO to terminate research project

Dr Maree and other named inventors develop ion exchange technique to remove sodium contamination from zeolite

1. The key principles relating to determining the inventive concept have been set out in various authorities as including:

"the invention or inventive concept of a patent or patent application should be discerned from the whole of the specification including the claims"[37]

"the inventive concept should principally be discerned from the specification, in particular admissions of drawbacks of the prior art, the objects of the invention and what are the claimed features that contribute to overcoming one or more of these drawbacks and achieving the objects of the invention"[38]

1. There are caveats that there is no single process to be followed:

"it is not possible to be very specific about how [identifying the inventive concept] is to be done. But as a general rule one will start with the specific disclosure of the patent ... What one is normally looking for is "the heart" of the invention. There may be more than one "heart" ..."[39]

"consideration of the requirements of patentability under s 18 of the Act, including the existence of an inventive step within the meaning of s 7(2) of the Act, is not part of the entitlement calculus"[40]

1. A further caveat when applying first step in Gray is that, as noted by the delegate in CNC Components Pty Ltd v SCD American Vehicles Pty Ltd [2024] APO 18 at [21], s36 requires consideration of entitlement to

"an invention disclosed in the specification filed in relation to the application for the patent" as per s36(1)(c), as opposed to post grant procedure under s191A which are limited to a determination regarding "entitlement to a patent", that is, based on the invention claimed" (my emphasis).

2. Therefore the possibility that a specification discloses multiple inventions must be considered, and to be successful in a request under s36(1)(c)(ii) the Requestor need only have contributed to one of them.
3. It is clear that the determination of the inventive concept starts by turning to the specification itself.
4. It is well accepted that the task of construction of the patent specification is one for the delegate, but this task can be assisted by evidence as to how the addressee, who is a skilled worker in the field, would have read it. The evidence filed by both parties included commentary on the specification by Dr McDonald (for the Requestor) and Dr Miller (for the Applicant). I concur with the Applicant that the reading of Dr McDonald, as an asserted co-inventor, should be addressed with more caution than the reading of Dr Miller.
5. Even so, although expert evidence can be helpful in e.g. ascertaining the meaning of technical terms, I do not consider that the opinions of experts who, while technically expert in their field, are not necessarily familiar with the requisite legal principles of construction, significantly assists the delegate in this task.[41]

1. The specification consists of ten pages of description, one figure which is a hand-annotated flow diagram illustrating the process, and concludes with eighteen claims.
2. Paragraph [0001] sets out the field of the invention as a process for extracting values,[42] such as high purity alumina and silica, from lithium slag, which is defined as the waste product generated once lithium has been extracted from aluminosilicate ores.
3. The background of the invention section from paragraphs [0002] - [0005] sets out the successful exploitation of lithium slag as a source of alumina as an object of the invention, set against the background of disadvantages with other sources of alumina including calcining kaolin and the Bayer process, as well as a lack of high-value applications for lithium slag. The specification points to conventional acid leaching techniques being unsuccessful on lithium slag. The specification points to three US patents which disclosed similar techniques to those used in the present application, but these are performed on lithium ore, not lithium slag.
4. The specification then provides a summary of the invention as a process with three steps at paragraph [0006]:

(a) hydrothermally treating lithium slag with an aqueous solution of an alkaline compound at selected temperature and duration; > > (b) performing an ion exchange step on the alkaline treated lithium slag; and > > (c) recovering values selected from the group consisting of aluminium compounds, silicon compounds and compounds containing silicon and aluminium.

5. Paragraph [0008] points to the alkaline treated slag "desirably exhibiting ion exchange properties (for example zeolites A, X or P)". Paragraphs [0009] - [0010] describe that the hydrothermal treatment step solubilises some alumina and a larger amount of silica, that the solid residue should be separated from the hydrothermal treatment, and that single or multi-stage hydrothermal treatment steps could be used e.g. to produce zeolite P.
6. Paragraph [0011] sets out that the process includes an ion exchange step to remove cations that had been introduced by the alkaline treatment step, which may influence the quality of the alumina or zeolite produced. Ammonium compounds are identified as suitable for ion exchange solutions. Later, at paragraph [0014], roasting of the ion exchanged residue is described for removing moisture and all or part of the ammonia from the residue, in order to prevent silica gel formation which may interfere with subsequent steps.
7. Paragraph [0013] (which appears somewhat out of order) describes acid leaching of the alkaline treatment residue or the ion exchange residue, for example with hydrochloric acid to liberate aluminium trichloride hexahydrate, which is a useful intermediate for producing alumina, and which can be converted to alumina or "even perhaps" high purity alumina as described later at [0017].
8. The general disclosure of the invention concludes with a statement that the process enables a lithium slag, currently a low-value byproduct, to be used for the production of valuable aluminium and silicon containing compounds of high purity in a cost-effective manner.
9. The specification then describes preferred embodiments of the process which provide more detailed reaction conditions in order to satisfy the patentability disclosure requirements. This section was not mentioned by the parties in the hearing, but I do note a reference to the single Figure at paragraph [0020]

10. There are a number of possible paths through this flow diagram, all beginning with steps 1 (beneficiation) and 2 (alkaline treatment) and ending at either steps 8-9 (precipitation of silicate from the alkaline leach solution phase) or 7[43] (precipitation of aluminium chloride). I particularly note that step 4 (ion exchange) appears to be optional in that it can be bypassed from step 3 (initial solid/liquid separation) either to step 5 or directly to step 8.
11. The claims accepted after examination have only one independent claim which is based on the 3 steps in paragraph [0006] but include some additional detail primarily relating to including separation steps mentioned in the specification, indicating that the ion exchange step removes cations introduced by the original alkaline treatment, and specifying that high purity alumina is recovered.
12. As this is a s36 proceeding, the claims do not have any special weight for determining the inventive concept, although they can potentially highlight where the named Applicant may believe the invention lies.[44]

Submissions and consideration - inventive concept

1. The Requestor's position on the inventive concept[45] is that it is a two-step process for extracting values such as aluminium and silicon from lithium slag, involving:
   • Hydrothermally treating lithium slag with an aqueous solution of an alkaline compound, and
   • Recovering values from the residue including by an acid leaching step.
2. The Applicant's proposed statement of the inventive concept, on the other hand, is a treatment process for recovery of high purity alumina from lithium slag which incorporates an ion exchange step.[46]
3. The controversy between the parties in the oral hearing could be summarised as follows: The Applicant pointed to passages in the specification that referred to high purity or high value products, and submitted that the high purity alumina could only be obtained by virtue of the ion exchange step to remove cations introduced during the alkaline treatment (elements highlighted in the claims as accepted). The Requestor, on the other hand, pointed to passages in the specification that in its submission indicated that the ion exchange step was in fact optional.
4. One representative example of this controversy was the weight of the term "for example high purity alumina and silica" in the opening sentence. The Applicant's position was that it pointed to the need to provide high purity products as opposed to the low value of lithium slag discussed in paragraph [0003]. The Requestor's position was that "for example" indicated that this was only one example of the invention and as such the invention was not limited to high purity. A similar phrase "alumina and silica desirably of high purity" is found in paragraph [0005]. I find the Requestor's position to be more convincing. The terms "preferably", "desirably" or "for example" are commonly used in patent specifications to indicate preferred forms of the invention without excluding other forms from the invention. I can infer that the drafters of the specification considered that extracting high quality alumina or silica was not absolutely necessary to the invention.
5. I think that it is clear in view of the specification as a whole that the ion exchange step only becomes relevant once lithium slag has been converted to a zeolite phase by alkaline treatment, and its effect is only realised once the values have been recovered from the ion exchanged residue. This is consistent with the objects of the invention being rooted in extracting values from lithium slag, with the disadvantages of the prior art being inability to successfully extract slag using acid leaching, and it is also consistent with the flow diagram provided in the Figure.
6. Therefore, I consider that alkaline treatment to convert lithium slag to zeolite and subsequent extraction of values from the zeolite are essential to the inventive concept. To the extent that the ion exchange step is part of the (or an) inventive concept, it must nevertheless comprise all three steps a)-c) at paragraph [0006].
7. The requestor is not contesting that the applicant is not an eligible person, so it is unnecessary to consider whether the ion exchange step is part of the inventive concept or not.
8. At the oral hearing, the Applicant further developed their case that the inventive concept was limited to the ion exchange step by the argument that once Dr Maree had conceived the step of conducting ion exchange to replace cations in a zeolite with ammonium, step a) (the conversion of lithium slag to zeolite) was merely a reduction to practice.
9. However, this is at odds not only with the specification as a whole (which is entirely couched from the perspective of lithium slag as a starting material) but also from the projects that Dr Maree declared she were pursuing, both of which involved TAS/lithium slag as a starting material. Dr Maree's own evidence is that she only addressed the problem of removing sodium contamination from zeolites after the two-step method was deemed commercially unfeasible. Therefore, even though the ion exchange step contributed by Dr Maree is clearly part of an inventive concept, it cannot be divorced from the other steps required to extract values from the lithium slag starting material.
10. The Applicant also relied on the evidence of Dr Miller, that in his opinion upon reading the specification the core of the invention was a treatment process for extracting values from lithium slag which incorporates an ion exchange process following an alkali activation of the lithium slag. I have pointed to my concerns about outsourcing the job of construction to an expert earlier. However even so, Dr Miller does not separate the ion exchange step from the initial alkali activation step, which is consistent with my finding that the inventive concept involves all three steps.

1. Having determined that the alkali activation of lithium slag to zeolite and recovery of values from the zeolite by acid leaching are part of the inventive concept, and in view of the timeline laid out above, the following question arises: did Dr McDonald communicate these concepts to Dr Maree or did Dr Maree invent them independently? The Applicant's position is the latter, and this is principally based on her concluding statement that "We were not following CSIRO work."[47]
2. It is worth setting out the established principles that relate to communication of the inventive concept:

"As Newcomer J observed ... 'the exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law"[48] > > " 'To be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality' and the inventors must 'have some open line of communication during or in temporal proximity to their inventive efforts'."[49] > > "A person must be able to say that without his or her contribution to the final conception it would have been less"[50]

3. I note that the last point is not a strict "but-for" test. For example in SARB a mere commercial stimulus was not sufficient to be awarded inventorship.[51] At the hearing, I characterised my understanding of this as being akin to an "intellectual but-for test" relating to intellectual contributions.
4. The following hypothetical scenario from the 8th edition of Terrell on Patents was cited with approval Stack v Davies Shephard Pty Ltd, [2001] FCA 501 at [19]:

"A may have invented something; he made have made a few experiments with the invention, and then abandoned it (without publication). B may subsequently have invented the same thing, altogether independently of A. If B applies for letters patent he is at law the first inventor; but if it is shown that the process of invention was not carried on in B's mind at all, but that A communicated his ideas to B, although with the full intention of abandoning them, B will not be the first inventor."

1. I take from these authorities that in order to find joint inventorship in this situation there must have been a significant, causal, contribution from the earlier inventor, there must have been a line of communication to the later inventor, and the abandonment or otherwise of the invention by the earlier inventor is not relevant.
2. Now in the present case there was no direct line of communication between Dr McDonald and Dr Maree. If there was any communication, explicit or implicit, it would have been mediated through either Dr David Maree or Phil Thick. However no evidence from those persons is available to shed any light on the nature of any such communication.
3. There is no evidence that Tianqi was aware of the potential to convert TAS/lithium slag to zeolites before that information was communicated by Dr McDonald to Dr David Maree (by email) and to Phil Thick (in, at least, the text of the Research Agreement). Indeed, Dr David Maree's initial reaction to Dr McDonald's reports seems to have been one of surprise and delight.
4. Dr Maree's evidence, however, is that she was tasked with producing zeolites from TAS upon commencing employment with Tianqi.
5. Based on the evidence on file, I consider the most likely scenario is that either Dr David Maree or Phil Thick tasked Dr Maree with the goal of producing zeolites and alumina from TAS, in the knowledge that this was possible due to Dr McDonald's research. It follows that without Dr McDonald's contribution; there would not have been any reason to investigate a phase change to zeolites. Dr Maree is therefore not the inventor of the alkaline treatment step, and her invention of the ion exchange step would not have occurred without it either.
6. Tellingly, Dr McDonald's email of 24 May 2017, in which he reports that the parent company required outright IP ownership and that "the idea of producing zeolites ... has ... been allocated by the parent company to other researchers"[52] appears entirely consistent with this scenario.
7. On the balance of probabilities I therefore find that both Dr McDonald and Dr Maree (and her team) are joint inventors.

1. Dr McDonald is an employee of the Requestor. The Consulting Services Agreement and Research Agreement, under which the initial conversion of lithium slag to zeolites was discovered, both clearly indicate that intellectual property generated as a result of the research are retained by the CSIRO. The CSIRO is therefore an eligible person within the meaning of s15(c). It follows that the scenario contemplated in s36(1)(c)(ii) applies - both the s36 applicant and the current nominated person are eligible persons.

1. I therefore declare that Tianqi Lithium Kwinana and the Commonwealth Scientific and Industrial Research Organisation are both eligible persons for Australian Patent Application 2018406693.

1. Costs typically follow the event. The Requestor limited their request to being added as an eligible person under s36(1)(c)(ii) and in that they were successful. I therefore award costs according to Schedule 8 against Tianqi Lithium Kwinana Pty Ltd.

[1] All references to legislation herein relate to this Act or the corresponding Patent Regulations 1991.

[2] [2009] FCAFC 116 ("Gray") (paraphrased from [253])

[3] Dr Maree's husband - I will refer to the inventor as Dr Maree and her husband by including his given name.

[4] Cf RGM-17 where it is explained that Tianqi Lithium Australia did not have direct employees at the time but was paying for the services of staff seconded from MSP.

[5] Apparently the parent company of the Applicant

[9] RGM-9 which is an email chain spanning 2 June - 5 August 2016

[13] I note that this passage refers to caustic soda extraction of beta-spodumene which is the virgin lithium ore, not the leached residue which was the subject of the research agreement then in place.

[14] RGM-14, apparently with reference to RGM-13 (undated) which disclosed a two-step treatment with NaOH followed by HCl treatment on the residue. See also McDonald #1 at 22-23

[17] RGM-22, which had identical IP provisions to that of the previous agreement

[18] See e.g. RGM-26 which is an email chain during March 2017

[25] Dr Maree indicates at 5 that Tianqi Lithium Australia changed its name to Tianqi Lithium Kwinana (the Applicant) - she refers to both as Tianqi

[26] Dr Maree explained at 8 that TAS was an aluminosilicate waste product from lithium extraction, also referred to as lithium slag. SEM-2 and SEM-3 both define TAS as "Talison Alumino Silicate", with Talison referring to the WA mine supplying the Kwinana refinery.

[36] Australian provisional patent application 2018900329 at [0006], certified copy available from the WIPO Patentscope database under WO2019148233

[37] Polwood at [60], affirmed in Gray at [222]

[38] Michael John Arieni v Sun-Wizard Holdings [2021] APO 20 at [49]

[41] Cf Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5) [2024] FCA 360 at [289], and Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 936 at [21]

[42] Although not explicitly defined in the description, I understand the term "values" to refer to substances with value, rather than value per se.

[43] Step 10 is not mentioned in the description but may have been intended to refer to calcining mentioned in paragraph [0017] - however nothing turns on this.

[44] Cf Andrew Bodlovich and Kevin William (Hogan) Gleeson v Green Camel Pty Limited [2024] APO 26 at [26], noting that in that case I did not have the benefit of submissions from either party and the background of the specification was of little assistance in determining the objects of the invention or the disadvantage

[45] Requestor's summary of submissions at 39

[46] Applicant's written summary of submissions at 55

[48] Polwood at [45], citing Mueller Brass Co v Reading Industries Inc 352 F. Supp. 1357 (1972)

[49] Polwood at [49], citing Cook Biotech Inc v Acell Inc [2006] USCAFED 149; 460 F.3d 1365 (2006) and Eli Lilly & Co v Aradigm [2004] USCAFED 155; 376 F.3d 1352 (2004)