Stephen Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 2202 (Ch)

[2025] EWHC 2202 (Ch)Case No CH-2024-000239
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
ON APPEAL FROM THE UK INTELLECTUAL PROPERTY OFFICE
Venue Rolls Building, Fetter LaneDate 1 September 2025
London EC4A 1NL
Before
MICHAEL TAPPIN KC(sitting as a Deputy Judge of the High Court)
Between
STEPHEN THALERAppellantTHE COMPTROLLER-GENERAL OF PATENTS, DESIGNS AND TRADE MARKSRespondent
Jacob Turner and Ryan Abbott (instructed by Potter Clarkson LLP) for AppellantStuart Baran (instructed by the Government Legal Department) for RespondentHearing Hearing date: 24 July 2025
Approved JudgmentI direct that no official shorthand note shall be taken of this judgment and that copies of the version as handed down may be treated as authentic.
[1]This is an appeal by Dr Stephen Thaler from the decision of Mr Andrew Bushell, a Hearing Officer acting for the Comptroller, dated 13 August 2024 (BL O/0764/24; the “Decision”).[2]On this appeal, Dr Thaler was represented by Mr Jacob Turner and Prof. Ryan Abbott, while the Comptroller was represented by Dr Stuart Baran. I thank them all for their helpful and concise submissions.

The UK applications and the previous proceedings

[3]On 17 October 2018 Dr Thaler filed at the UK Intellectual Property Office (“the UKIPO”) an application for a UK patent for what is said to be an invention consisting of a new kind of food or beverage container. On 7 November 2018 Dr Thaler filed another application for a UK patent for what is said to be an invention consisting of a new kind of light beacon and a new way of attracting attention in an emergency.[4]In each case, the request for grant form stated that Dr Thaler was not the inventor of the invention. The examiner informed Dr Thaler that he would need to file a statement of inventorship for each application within 16 months of the filing date in accordance with s.13(2) Patents Act 1977 (“the Act”). On 23 July 2019 Dr Thaler filed a Form 7 for each invention identifying the inventor as “DABUS” and indicating that he had a right to be granted a patent “by ownership of the creativity machine DABUS”. The Forms 7 were accompanied by a statement containing factual assertions and legal submissions in support of Dr Thaler’s position. In response to objection by the examiner, on 28 August 2019 Dr Thaler filed amended Forms 7 containing the additional statement that “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”.[5]The matter progressed to a hearing before Mr Huw Jones, a Hearing Officer acting for the Comptroller. In his decision dated 4 December 2019 (BL O/741/19) Mr Jones held that DABUS could not be an inventor within the meaning of s.7 and s.13 of the Act because it was not a person and, even if it could, ownership of DABUS did not entitle Dr Thaler to an invention created by DABUS. Mr Jones held that, as a result, Dr Thaler had not complied with the requirements of s.13(2) and that the applications would be taken to be withdrawn at the expiry of the prescribed period, i.e. that specified by rule 10(3) Patents Rules 2007 (“the Rules”).[6]Dr Thaler’s appeal from that decision was dismissed by Marcus Smith J on 21 September 2020: [2020] EWHC 2412 (Pat). On 21 September 2021 a second appeal to the Court of Appeal was dismissed (Arnold and Elisabeth Laing LJJ; Birss LJ dissenting, but not on the question of whether DABUS could be an inventor): [2021] EWCA Civ 1374. The Supreme Court granted permission to appeal but dismissed the appeal on 20 December 2023 for reasons given by Lord Kitchin, with whom all the other members of the Court agreed: [2023] UKSC 49.[7]Those proceedings were conducted on the basis that the factual assertions made by Dr Thaler in the document accompanying his Forms 7 were true. The entire statement is set out in the judgment of Marcus Smith J at [5], but it included the following:
“A machine called “DABUS” conceived of the present invention The invention disclosed and claimed in this British patent application was generated by a specific machine called “DABUS”… In the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the teaching had been given to a person, that person would meet inventorship criteria as inventor. In some cases of machine invention, a natural person might qualify as inventor by virtue of having exhibited inventive skill in developing a program to solve a particular problem, or by skilfully selecting data to provide to a machine, or by identifying the output of a machine as inventive. However, in the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.”
[8]Matters were summarised by Lord Kitchin at [51], [52] and [55]:
“51. Here Dr Thaler has made it clear that he does not claim to be and indeed is not the inventor of any inventions described or disclosed in the applications; that it was and remains his belief and case that the inventions were made by DABUS, a machine powered by AI; and that DABUS ought therefore to be named and recognised as inventor. I would also emphasise, as has the Comptroller, that the UKIPO did not and could not go behind those assertions, so far as they constituted assertions of fact, in dealing with these applications. The question whether DABUS in fact created and generated the inventions described in the applications has therefore never been investigated. The applications have been considered and assessed (and the appeals have been decided) on the basis that the factual assertions made by Dr Thaler are correct. 52. It follows but is important to reiterate nonetheless that, in this jurisdiction, it is not and has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different. … 55. …Dr Thaler has argued throughout that the technical advances and the new products described and disclosed in the applications were devised by DABUS, and that DABUS was their inventor. As I have indicated, the Comptroller accepts for the purpose of these proceedings the substance of the factual case advanced by Dr Thaler, namely that DABUS created or generated the technical advances described and disclosed in the applications and did so autonomously using AI…”

The Parent application

[9]On 17 September 2019 Dr Thaler filed an International Patent Application under the Patent Co-operation Treaty, claiming priority from two European applications filed concurrently with the two UK patent applications considered by the UKIPO and the courts as described above. That application was given the number PCT/IB2019/057809 and was later published as WO 2020/074499. On 16 April 2021 that application entered the national phase in the UK as GB2105428.3 (“the Parent”).[10]On 2 August 2021 the UKIPO issued a preliminary examination report in respect of the Parent. That report required a Form 7 to be filed by 2 October 2021 and indicated that that deadline could be extended by two months on application.[11]In a response dated 1 October 2021, Dr Thaler took the position that, according to s.89B(1)(c) of the Act, the statement of inventorship made in the international phase (which identified the inventor as DABUS) should be treated as a statement filed under s.13(2). In a letter dated 27 October 2021 the UKIPO indicated that it agreed with that, but that Dr Thaler still needed to file a Form 7 which(i) identified a person whom he believed to be the inventor and(ii) indicated how he derived rights from such a person. The letter said that the period for serving such a Form 7 could be extended until 2 December 2021 on application. It concluded: “If you do not meet this requirement by that date, the application may be refused”.[12]In a response dated 29 November 2021, Dr Thaler reiterated his position and requested a hearing. On 15 February 2022 the UKIPO responded, reiterating its position that the effect of s.89B(1)(c) did not absolve Dr Thaler from satisfying the requirements of s.13(2). The letter concluded by saying that, for the reasons given, “we are minded to refuse this application” and indicating that Dr Thaler had the right to be heard on the effect of s.89B(1)(c).[13]A hearing was held before Mr Jones (as Hearing Officer) on 26 April 2022, shortly before which (on 19 April 2022) Dr Thaler submitted an “auxiliary request” Form 7 which stated that “the applicant identifies no person or persons whom he believes to be an inventor” and indicated that Dr Thaler claimed to be entitled to apply for a patent by virtue of s.7(2)(b) of the Act.[14]In a decision issued on 24 May 2022 (BL O/447/22) Mr Jones decided that s.89B(1)(c) required the UKIPO to treat information provided on the statement of inventorship made in the international phase as if it had been provided on Form 7 but did not preclude the UKIPO from examining whether the requirements of s.13(2) had been complied with. He held that the information provided did not comply with the provisions of the Act (and in any event the “auxiliary request” Form 7 had been filed out of time) and so the Parent was “taken to be withdrawn”. There was no appeal against that decision. However, and despite Mr Jones having rejected the submission that he should delay issuing his decision pending the outcome of proceedings in the Supreme Court, formal action following his decision was stayed until after the judgment of the Supreme Court was delivered. Following that judgment, the register was updated to state that the Parent was terminated as of 25 May 2022.

The Divisional application

[15]On 10 May 2022 Dr Thaler filed application no. GB2206827.4 (“the Divisional”) as a divisional application from the Parent and claiming an earliest priority date of 17 October 2018. The application was accompanied by a Form 7 including a statement that “the applicant identifies no person or persons whom he believes to be an inventor” and an indication that Dr Thaler claimed to be entitled to apply for a patent by virtue of s.7(2)(b) of the Act. The examiner objected to that Form 7 as not complying with the requirements of s.13(2). On 8 July 2022 Dr Thaler filed an amended Form 7 in which he instead claimed to be entitled by virtue of s.7(2)(c), accompanied by a letter which stated that Dr Thaler did not believe that he was the inventor in accordance with the requirements of the Act.[16]On 22 December 2023 (two days after the Supreme Court judgment) Dr Thaler filed a further Form 7 in respect of the Divisional. That Form 7 named Dr Thaler as the inventor. It was accompanied by an amended first page of the application in which text had been added to the start of the description as follows:
“The inventions disclosed in this application are AI-generated inventions, which were conceived autonomously by the artificial intelligence machine DABUS…. Dr Thaler, the applicant, is the owner of DABUS.”
There was also an addendum to the Form 7 which included the following text:
“A machine called “DABUS” conceived of the present invention The invention disclosed and claimed in this European [sic] patent application was generated by a specific machine called “DABUS”
. Dr Thaler owns DABUS, built DABUS, trained DABUS and used DABUS. Dr Thaler nevertheless submits he is not an inventor under traditional criteria, because in the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the training Dr Thaler provided DABUS had been given to a person, that person would meet inventorship criteria as inventor. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.”[17]The examiner again objected that the Form 7 did not meet the requirements of s.13(2) and also that it had been filed out of time. The matter proceeded to a hearing before Mr Bushell on 23 May 2024.

The Decision

[18]In his Decision, Mr Bushell identified four issues (I paraphrase somewhat):(1) Was the Divisional filed in time to benefit from divisional status?(2) If yes, should it be refused because the compliance period for putting it in order had expired?(3) Could the Form 7 of 22 December 2023 be deemed to have been filed on time?(4) If yes, did that Form 7 meet the requirements of s.13(2)?[19]On Issue 1, Mr Bushell referred to rules 10(3) and 68(2), noting that their combined effect was that the prescribed period for filing a statement in accordance with s.13(2) for the Parent expired on 16 June 2021 (two months after it entered the national phase). He then said that it was UKIPO practice that decisions regarding the withdrawal of an application are applicable ex tunc, meaning that the Parent must be taken to be withdrawn as of 17 June 2021. He said that approach was supported by the decision in Siemens Medical Systems (BL O/063/00), while acknowledging that the circumstances in that case were different. He said that the registry entry showing termination of the Parent as of 25 May 2022 was an error caused by treating the date of Mr Jones’ decision as the date of deemed withdrawal, and that the register should be corrected to show the date of 17 June 2021 instead.[20]Mr Bushell then noted that rule 19(2)(a) provides that a divisional application under s.15(9) can only be filed if the parent application has not been terminated or withdrawn. It followed that, as the Divisional had not been filed until 10 May 2022, after the deemed date of withdrawal of the Parent (17 June 2021), it could not be accorded divisional status. He rejected the submission that it was enough if a decision was awaited on the status of the Parent at the time when the Divisional was filed. He recognised that the consequence of his decision was that, as the Parent had been published, it was highly likely that the Divisional would be anticipated. While he expressed some sympathy with Dr Thaler’s position, in his view the relevant provisions were clear.[21]As Mr Bushell had determined Issue 1 against Dr Thaler, Issue 2 did not arise.[22]On Issue 3, Mr Bushell started by observing that the Form 7 submitted on 22 December 2023 was prima facie filed late as, even though the Divisional had lost divisional status and so only benefitted from a filing date of 10 May 2022, the deadline for submitting the information required by s.13(2) expired on 10 September 2023.[23]However, Mr Bushell approached matters on the basis contended for by Dr Thaler, namely that the Form 7 filed on 22 December 2023 was a request to correct the existing Form 7 filed on 8 July 2022 under s.117. Having considered s.117, rule 49 and extracts from the Manual of Patent Practice, he concluded that s.117 could not be used to overcome the mandatory requirements of s.13(2).[24]Mr Bushell then considered the submission that the UKIPO had made a procedural error by not objecting to the second Form 7 filed on 8 July 2022. He took the view that the examiner had indeed made a procedural error by not objecting to that Form 7 and instead apparently staying examination pending the judgment of the Supreme Court. The question then arose as to whether the period for filing a Form 7 should be extended using the powers in rule 107, which allow a period of time to be extended if and only if “(a) the irregularity…is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner or the Patent Office; and (b) it appears to the comptroller that the irregularity should be rectified.” However, Mr Bushell said that there was little point extending the deadline for compliance with the requirements of s.13(2) if the third Form 7 did not meet those requirements.[25]That led him to Issue 4. Mr Bushell noted that the third Form 7 filed on 22 December 2023 named Dr Thaler as the inventor, in contrast to the previous Forms 7 which stated that he was “unable to identify any person or persons whom he believes to be an inventor” and identified his entitlement to apply for a patent as arising under s.7(2)(b) or (c).[26]Mr Bushell recorded the UKIPO’s position as being that the third Form 7 did not meet the requirements of s.13(2) because it was clear from the previous Forms 7 that Dr Thaler did not believe any person was the inventor. He then referred to comments made by Dr Baran as counsel for the Comptroller in response to a question from Lord Kitchin during argument before the Supreme Court, which Dr Thaler submitted showed that he was entitled to be named as inventor:
“Lord Kitchin: Again, the last question on this, if I may. Knowing what we know now about this application and Dr Thaler’s involvement so far as it’s been described in the papers, the Comptroller would not have had an objection, or perhaps would not have had the power to object, to this application proceeding in the name of Dr Thaler? Dr Baran: Proceeding with Dr Thaler as the inventor? That’s absolutely right. What would have happened if that form landed on the Comptroller’s desk is nothing. Because it … nothing in the sense that there would have been no objection, we wouldn’t be here today. Because a person would have been nominated, and the Comptroller won’t say “well, was it really him?” any more than they do in any other case where it’s absolutely clear that it’s entirely human involvement. We don’t say “well, was it him, or was it his colleague Miss Bloggs” and we don’t look to see if the person exists. We don’t check the electoral roll. We are not empowered to do any of those things.”
[27]Mr Bushell’s answer to that argument was that Dr Baran had been clarifying that if Dr Thaler had simply submitted Forms 7 for his UK applications which had identified him as inventor, the UKIPO would have accepted that at face value and no further investigations would have taken place. Mr Bushell continued:
“I do not believe that the comments of comptroller’s counsel in any way imply that we can disregard what we already know regarding the declarations of inventorship on this divisional application. We have clear evidence on file that Dr Thaler has never believed he is the inventor of this application, therefore I cannot accept this latest change of mind.”
[28]Mr Bushell therefore concluded that the third Form 7 did not meet the requirements of s.13(2) of the Act in identifying whom the applicant believes to be the inventor, and so there was little point in using the provisions of rule 107 to extend time to allow it to be filed. As no Form 7 had been filed which met the requirements of s.13(2), the Divisional was deemed to be withdrawn.

The Appeal

[29]Dr Thaler’s appeal against the Decision engages with Mr Bushell’s reasoning and conclusions in relation to Issues 1 and 4. It is common ground that(a) if the appeal succeeds in relation to Issue 1 the matter will need to be remitted to the UKIPO for a decision on Issue 2 and(b) if the appeal succeeds in relation to Issue 4 it will be necessary for the matter to be remitted to the UKIPO for a decision on Issue 3. It is also common ground that a decision is needed on Issue 4 even if Issue 1 is decided in Dr Thaler’s favour, but that if Dr Thaler fails on Issue 4, that is fatal to the Divisional and a decision on Issue 1 is not strictly necessary. The Comptroller raises two points on Issue 1 by way of Respondent’s Notice.

Issue 1

[30]Dr Thaler’s Grounds of Appeal advanced four submissions in relation to Issue 1. The first three were all aspects of a single contention, namely that the Hearing Officer was wrong to construe s.13(2) as leading to deemed withdrawal of an application on expiry of the prescribed period if the requirements of that section had not been complied with. Dr Thaler’s argument (which was advanced on this appeal by Mr Turner) was that the correct construction was that deemed withdrawal took effect only when a decision was taken that the requirements of s.13(2) had not been complied with. The latter was referred to in argument as ex nunc effect, while the former was referred to as ex tunc effect and was supported by the Comptroller (including by one of the Respondent’s Notice points).[31]The fourth ground of appeal on Issue 1 was that the events summarised in paragraphs 10-12 above were such as to estop the UKIPO from finding that the Parent was deemed to be withdrawn on 17 June 2021. Dr Thaler’s argument was that if the UKIPO had, instead of issuing a preliminary examination report on 2 August 2021 requesting a Form 7, notified him that the Parent was deemed to be withdrawn as of 17 June 2021, he would have been able to request a two month retrospective extension of time for compliance with the requirements of s.13(2) and would have been able to file a divisional application within that period. Instead, Dr Thaler submitted, the UKIPO’s preliminary examination report and its subsequent correspondence amounted to a representation that the Parent was still alive, upon which he had relied to his detriment by not filing a divisional application. After I pointed out that the estoppel argument only mattered if the Comptroller was right about the construction of s.13(2), questioned whether there could be an estoppel against operation of the statute, and suggested that the existence of rule 107 could be relevant to the argument that an estoppel could arise, Mr Turner abandoned the fourth ground of appeal (to which one of the Respondent’s Notice points was relevant) and said that he was reserving the right to make an application under rule 107. It is therefore neither necessary nor helpful to say anything more about these matters.[32]S.13(2) is as follows: “Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement –(a) identifying the person or persons whom he believes to be the inventor or inventors; and(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.” (a) identifying the person or persons whom he believes to be the inventor or inventors; and (b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;[33]S.123(1)-(2) empower the Secretary of State to make rules, including rules prescribing time limits for doing things required to be done by the Act and for altering any period of time specified by the Act or by rules. S.123(3A) declares that rules providing for any alteration of a period of time may permit a period to be extended notwithstanding that it has already expired.[34]Rules 10(3) and 68(2) are the rules which specify the prescribed period for the purpose of s.13(2). In a case such as the present, their effect is to specify the prescribed period as being the period of two months beginning immediately after the date on which the national phase begins.[35]Rule 108 deals with extensions of time limits. In particular rule 108(2), read with Part 2 of Schedule 4, requires the Comptroller to extend the period provided by rules 10(3) and 68(2) by two months if certain conditions are met, including that the request for an extension is made within the period of two months beginning immediately after the date on which the relevant period expired. Rule 108(3) allows the Comptroller, if he thinks fit, to further extend that period if evidence is provided to support the request.[36]In considering the rival contentions as to the proper construction of s.13(2), it is important to note that the operation of the subsection does not require a decision to be made by the UKIPO. The application “shall be taken to be withdrawn” if the applicant fails, within the prescribed period, to file a statement with the UKIPO which complies with the requirements of s.13(2)(a) and (b). This is a deemed withdrawal which takes effect if the applicant does not comply with the requirements of the subsection. There is a distinction between(i) whether the applicant has, in fact and in law, complied with the requirements of the subsection and(ii) a decision as to whether the applicant has complied with the requirements of the subsection. There is nothing in s.13(2) to suggest that the application shall only be taken to be withdrawn at the point when the UKIPO considers the matter and concludes that the applicant has not complied with the requirements of the subsection. On the contrary, in my judgment s.13(2) clearly indicates that nothing further is required, beyond a failure to comply with the requirements of the subsection, in order for the application to be taken to be withdrawn.[37]In the course of argument, I asked Mr Turner whether Dr Thaler’s case was that an application was not taken to be withdrawn at the expiry of the prescribed period even if the applicant failed to file any statement within the prescribed period – did he say that even in such a case there was no deemed withdrawal until the Office had considered the position and made a decision? That led Mr Turner to seek to distinguish between what he called clear and unambiguous failures, in which no decision was needed, and other cases where a decision was needed to resolve the question of whether there had been a failure. Quite apart from the difficulty in determining whether a failure is clear and unambiguous (a question on which, in many cases, a decision might be needed), to my mind the need to try to draw such a distinction only highlighted the problem with Dr Thaler’s proposed construction of the subsection. In my judgment it is clear that deemed withdrawal takes effect if there has, in fact and/or in law, been a failure to comply with the requirements of the subsection. The fact that there may be a dispute about whether there has been such a failure, requiring a decision by the Comptroller, does not mean that the failure has not already occurred and had the consequences specified by s.13(2).[38]As the Comptroller submitted, if Dr Thaler’s interpretation were to be adopted, the time at which the deemed withdrawal took effect would depend on the time taken for the UKIPO to consider the matter and reach a decision and so would depend on matters such as the administrative load on the UKIPO from time to time. It would also mean that an applicant would be able to extend the deadline for complying with a requirement of the Act and Rules by demanding a hearing (and, presumably, by appealing against the decision of the hearing officer). However, the scheme of the Act and the Rules is plainly to provide for a set of deadlines applicable to all applicants, including the ability to extend those deadlines under rule 108. The legislation has (by rule 108) provided applicants with the ability to seek extensions of the time for compliance with the requirements of the Act. There is no reason to think that Parliament intended applicants to be able to delay the effects of their non-compliance until a final decision had been made confirming that they had not complied.[39]As I have said, applicants are able to obtain a two month extension, including a retrospective extension, under rule 108(2), and perhaps also a further extension under rule 108(3). That means that there may be times at which it is not possible to say whether an application is deemed to have been withdrawn even though the period prescribed by rules 10(3) and 68(2) has expired, because an applicant may still seek and be granted an extension of time. It could be said that a scheme which involves applications being in limbo after the end of the period prescribed by the rules, until it is known whether a retrospective extension of time will be sought and granted, suggests that the Comptroller’s construction of s.13(2) is not correct. I do not agree. S.13(2) is a deeming provision – a kind of legal fiction – and I do not see any difficulty in a situation in which it is not possible to know whether the deeming provision operated on the expiry of the period prescribed by rules 10(3) and 68(2) until that has crystallised by the failure of the applicant to seek and obtain a retrospective extension.[40]During the course of argument, reference was made to other provisions of the Act which provide for deemed withdrawal. It was pointed out that s.15(10), like s.13(2), provides that an application shall be treated as having been withdrawn in certain circumstances, whereas s.18(1) and s.20A(9) provide that if certain acts are not done within specified periods the application shall be treated as having been withdrawn “at the end of” or “on the expiry of” the relevant period. Dr Thaler submitted that because in s.18(1) and s.20A(9) it was stated that the deemed withdrawal took effect at the end of the period in question, the implication was that matters were different in s.13(2) and s.15(10). I do not agree. I do not think that one can infer from the language used in s.18(1) and s.20A(9) that Parliament intended that, in s.13(2) and s.15(10), withdrawal would only be deemed to take effect when a decision was made that there had been non-compliance with the requirements of those subsections. Apart from anything else, it seems to me that Parliament may have used the additional wording in s.18(1) and s.20A(9) to avoid any suggestion that the application was to be treated as having been withdrawn at an earlier point in time mentioned in those provisions (in s.18(1), when the request for a search was made and, in s.20A(9), when the application was originally refused or treated as having been refused or withdrawn).[41]Dr Thaler submitted that Mr Bushell had been wrong to rely on the decision in Siemens Medical Systems in support of his decision on Issue 1. He pointed out that Siemens was a case of actual withdrawal under s.14(9). The Hearing Officer in that case (Mr Sean Dennehey) referred to an earlier decision (Spectra-Tech) which held that if a clear and unambiguous request was made by the applicant to withdraw an application, that could not be revoked. In Siemens, Mr Dennehey rejectedthe submission that withdrawal was not effective until the register had been updated to record the withdrawal of the application. He held that there was nothing in s.14(9) to suggest that anything further was required, beyond the act of withdrawal itself, for a withdrawal to become effective. I can see nothing wrong with Mr Bushell’s reliance on Siemens. He recognised that the circumstances of that case were different and only treated it as supportive of the ex tunc approach to provisions of the Act such as s.13(2).[42]Dr Thaler also picked up on the “clear and unambiguous” language in Spectra-Tech and Siemens and submitted that there could be no deemed withdrawal unless there was a clear and unambiguous failure to comply with the requirements of s.13(2). That is to ignore the difference between cases of deemed withdrawal and actual withdrawal by an act of the applicant. It is entirely understandable that the UKIPO requires a request for withdrawal by an applicant to be clear and unambiguous in order to qualify as a withdrawal under s.14(9). But s.13(2), like the other subsections dealing with deemed withdrawal, only requires there to be, in fact and/or in law, a failure to comply with the requirements of the relevant subsection. Either there has been such a failure or there has not. There is nothing to suggest that the failure has to be a clear and unambiguous one.[43]Dr Thaler also argued that his construction of s.13(2) was required by application of s.3(1) Human Rights Act 1998 (“the HRA”), which provides that:
“So far as it is possible to do so, primary legislation and subordinate legislation must be read and given effect to in a way which is compatible with the Convention rights.”
He submitted that this was a strong duty of interpretation, citing Ghadain v Godin-Mendoza [2004] UKHL 30 and in particular Lord Nicholls at [30]-[33].[44]The Convention right on which Dr Thaler relied was Article 1 of the First Protocol which provides:
“Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law. The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties.”
[45]The possessions on which Dr Thaler relied for these purposes were the Parent and the Divisional. He pointed out that s.30(1) of the Act provided that an application for a patent was personal property. Dr Thaler’s submission was that a deemed withdrawal of the Parent as of 17 June 2021 not only deprived him of the Parent but also substantially undermined the value and utility of the Divisional because of the consequences of the loss of the earlier filing date, such that it could be regarded as depriving him of the Divisional as well. He submitted that s.3(1) of the HRA required s.13(2) to be construed in such a way as to avoid such deprivation.[46]In my judgment the short answer to this point is the possessions relied on by Dr Thaler, namely patent applications, are rights which are inherently limited and conditional. They arise under a legislative scheme and are subject to the provisions of that scheme. An application is deemed to be withdrawn if certain requirements of the legislative scheme are not complied with, including that under s.13(2). A divisional application is only entitled to the filing date of its parent if it is filed at a time before the parent is withdrawn. If the requirements of the legislative scheme are not complied with, and the consequences of that scheme follow, then that cannot be said to amount to deprivation of the applicant’s possessions. The possession was a right which existed and had value only to the extent that the requirements of the legislative scheme were satisfied.[47]Further, Dr Thaler’s submission was in effect that, applying s.3(1) of the HRA, all provisions of the Act and the Rules should be construed in favour of applicants unless it was not possible to do so (in the sense explained in Ghadain). However, the Act and the Rules form a legislative scheme which, as the Comptroller submitted, seeks to balance the interests of applicants against other applicants and the public at large. That legislative scheme seeks, inter alia, to ensure that applicants are subject to time limits to avoid applications being pending for extended periods (which can give rise to uncertainty about what monopoly rights may be granted) and that all applicants are subject to the same time limits prescribed by the Act and the Rules, with the same ability to extend those time limits. When Parliament has constructed such a scheme, designed to strike a balance between various interests, I see no reason why its provisions should be construed in favour of applicants if it is at all possible to do so.[48]The Comptroller relied on the fact that the conclusion reached by Lord Kitchin (at [99] of his judgment) was that the Hearing Officer in the previous proceedings has been “right to find the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3)”. However, the point at issue in the present case was not in issue before the Supreme Court (nor was it in issue before Marcus Smith J or the Court of Appeal, and the only point raised before the Hearing Officer was whether the UKIPO could act before the prescribed period expired). It would therefore be wrong to regard the form of words chosen by Lord Kitchin as representing a concluded view having heard argument.[49]Nevertheless, the form of words chosen by Lord Kitchin conform with what in my judgment is, for the reasons I have explained above, the correct construction of s.13(2). I therefore determine Issue 1 against Dr Thaler.

Issue 4

[50]S.7 provides:(1) Any person may make an application for a patent either alone or jointly with another.(2) A patent for an invention may be granted – (a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”[51]Therefore, a patent for an invention shall be granted primarily to the inventor(s), namely the actual deviser(s) of the invention. There is a rebuttable presumption that the applicant is the person entitled to be granted a patent on the application.[52]The requirement of s.13(2), so far as inventorship is concerned, is that the applicant should identify the person(s) whom he believes to be the inventor(s). As Lord Kitchin emphasised (at [92] of his judgment) “it is no part of the function of the Comptroller to examine the correctness of genuine and plausible statements of inventorship and entitlement under s.13(2)”. Nevertheless, for the reasons explained by Lord Kitchin, the statements made by Dr Thaler in the Forms 7 for his UK applications did not comply with the requirements of s.13(2). The statement as to inventorship did not comply because DABUS was not, as a matter of law, a person. The statement as to derivation of rights did not comply because ownership of a machine did not, as a matter of law, entitle a person to inventions made by that machine. As Lord Kitchin put it at [96], the fact that it is not the function of the UKIPO to investigate the correctness of an apparently genuine statement of fact by the applicant “does not mean to say that the UKIPO is powerless to act where that indication is obviously defective or insufficient”.[53]The question raised by the present case is whether a statement of inventorship on a Form 7 which states that the applicant believes a natural person or persons to be the inventor(s) can be rejected as not complying with s.13(2) and, if so, whether the Hearing Officer was right to find that Dr Thaler’s statement of belief on his third Form 7 did not comply with s.13(2).[54]I can see no reason why, in principle, a statement that the applicant believes a natural person or persons to be the inventor(s) cannot be “obviously defective”. For example, an applicant might submit a Form 7 identifying themselves and Dr X as inventors, and say:
“Dr X was the actual deviser of the invention and I am their employer”
. The correct approach in such a case, of course, would be for the applicant to identify Dr X as the inventor and claim derivation of rights under s.7(2)(b). But the statement identifying the applicant as an inventor is obviously defective. Moreover, it is obviously defective on the basis of the information provided to the UKIPO by the applicant, without the UKIPO having to conduct any investigation of the correctness of the statement.[55]In the present case, the statement of Dr Thaler’s belief on the Form 7 of 22 December 2023 (i.e. that he is the inventor) differs from all the other statements of belief as to inventorship which he has submitted in connection with his various applications, which either identified DABUS as the inventor or stated that he identified no person(s) whom he believed to be an inventor.[56]Dr Thaler explained that change of position by saying that his belief as to the facts had not changed, but his understanding of the law had changed as a result of the judgment of the Supreme Court. However, as the Comptroller pointed out, what the judgment of the Supreme Court did was to confirm all the decisions below that a machine could not be an inventor for the purposes of the Act. It changed nothing in the law regarding what qualifies a natural person as an inventor (actual deviser) of an invention. It is natural to ask: if Dr Thaler now believes that his contribution to the inventions was such as to make him an inventor, why did he previously say that he did not believe any natural person to be an inventor? However, it is possible that Dr Thaler’s belief has changed, even if it is not logical for such a change in belief to have been caused by the judgment of the Supreme Court that a machine could not be an inventor for the purposes of the Act.[57]Dr Thaler contended that it was uncertain what was sufficient for a person to be an inventor in the context of an invention generated by or with the assistance of AI. He contended that it might be sufficient for a person to have(i) trained or designed the system that generated an invention,(ii) caused the system to generate the invention,(iii) owned the system, or(iv) been the first person to select or appreciate the appropriateness of AI output (even if that had already been identified by the AI). Dr Thaler submitted that in circumstances where the courts had not identified what amounted to a sufficient contribution by a natural person to an AI-generated invention to amount to inventorship, it was reasonable for him to believe that he was the inventor of the present inventions.[58]In this regard, Prof. Abbott (who argued Issue 4 on behalf of Dr Thaler) referred me to various materials from other jurisdictions. The USPTO has issued guidance stating that the use of an AI system by a natural person does not preclude them from qualifying as an inventor if they “significantly contributed to the claimed invention” (see the Inventorship Guidance for AI-Assisted Inventions issued by the USPTO on 13 February 2024, in particular section IV, including the guiding principles in part B thereof). The German Federal Supreme Court in its decision of 11 June 2024 (X ZB 5/22) concluded that identification of Dr Thaler as inventor together with a statement that he had “prompted [or caused] the artificial intelligence DABUS to generate the invention” was acceptable (though not identification of him as inventor together with a statement that the invention “was created by an artificial intelligence called DABUS”, because that called into question the designation of the applicant as inventor). The Swiss Federal Administrative Court, in its judgment of 26 June 2025 (B-2532/2025) held that a natural person qualified as a co-inventor if they influenced an AI system by contributing to the data processing that leads to an AI-generated invention. It held that Dr Thaler was an inventor because he had sufficient influence on DABUS by providing data and training and recognised the product of DABUS as an invention.[59]This is not the occasion on which to embark on a discussion about what contribution is sufficient for a natural person to be an inventor of an AI-generated invention. Further, the US, German and Swiss materials, while interesting, arise in the context of different legislative schemes. In my judgment, the question is whether, on the materials provided by Dr Thaler to the UKIPO, his statement of belief that he is the inventor of the inventions in the Divisional is “obviously defective”. I prefer to leave open the question of whether it is proper to have regard to statements made by Dr Thaler on other applications, even though they are from the same family, or whether that might be regarded as straying into an investigation. Instead, I propose to address the question (as Mr Bushell did) by regard only to the statements made by Dr Thaler in relation to the Divisional.[60]As mentioned in paragraph 15 above, the first two Forms 7 included statements that Dr Thaler “identifies no person or persons whom he believes to be an inventor”, and the second Form 7 was accompanied by a statement that Dr Thaler did not believe that he was the inventor in accordance with the requirements of the Act. However, as it is possible that Dr Thaler’s belief could have changed before filing his third Form 7, I prefer (without deciding whether it is necessary to do so) to consider matters by reference only to the statements made in that filing.[61]The statements accompanying Dr Thaler’s Form 7 of 22 December 2023 are set out in paragraph 16 above, but it is worth repeating them. The front page of the application stated that “The inventions disclosed in this application are AI-generated inventions, which were conceived autonomously by the artificial intelligence machine DABUS”, while the addendum stated:
“A machine called “DABUS” conceived of the present invention The invention disclosed and claimed in this European [sic] patent application was generated by a specific machine called “DABUS”
. Dr Thaler owns DABUS, built DABUS, trained DABUS and used DABUS. Dr Thaler nevertheless submits he is not an inventor under traditional criteria, because in the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the training Dr Thaler provided DABUS had been given to a person, that person would meet inventorship criteria as inventor. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.”[62]In my judgment these statements clearly identify DABUS and not Dr Thaler as the “actual deviser” of the inventions. DABUS is said to have conceived of the inventions autonomously and independently. It is emphasised that DABUS was not created to solve any particular problem, nor trained on any special data relevant to the inventions. Further (if it matters) it was DABUS that recognised what it produced as being an invention. Moreover, it is said that Dr Thaler recognises that he is not an inventor on traditional criteria, which can only mean that his contribution was not such as would qualify him as a co-inventor.[63]Therefore, in my judgment it is apparent from the statements accompanying Dr Thaler’s third Form 7 that his statement of belief that he is the inventor of these inventions is “obviously defective”.[64]Dr Thaler said that he should not be treated less favourably because he had opted for transparency as to the circumstances of the making of the inventions. He said that an applicant who had named themselves as inventor without disclosing the fact that the invention was generated by AI would have faced no objection from the UKIPO. That is no doubt correct – and indeed that is what Dr Baran confirmed in response to the question from Lord Kitchin quoted in paragraph 26 above (I should add that Prof. Abbott, rightly in my view, did not press the suggestion that Dr Baran was saying that any Form 7 which Dr Thaler submitted naming him as inventor would be accepted, or that the Comptroller was somehow estopped from acting otherwise). It may be that consideration should be given to whether provision needs to be made requiring an AI-generated invention to be identified as such (as the USPTO has done). But that is not a matter for me. Nor should I be swayed by the fact that it is Dr Thaler’s voluntary statements to the UKIPO which have led to his Form 7 failing to comply with the requirements of s.13(2).[65]For these reasons, I determine Issue 4 against Dr Thaler. His appeal must therefore be dismissed.

Cited in 1 later judgment