“4. Concerning issues 1 & 2, the judge erred in law in upholding the Hearing Officer’s construction ofs.13(2) of the Patents Act 1977 – the Act and s13(2), where he held that a withdrawal of a daughter divisional application was deemed withdrawn ex tunc upon expiry of the prescribed period if the requirements of that section were deemed not to have been complied with in respect of the parent application. The Court gave insufficient weight to the proposition that there is nothing in the 1977 Act itself which requires or specifies that effect. At [46] and [47] of the judgment the judge erred further by failing to follow a strong interpretative duty of construction required by thes.3 of the Human Rights Act 1998 – the Human Rights Act, by concluding that the right of possession relied upon by the Appellant “are rights which are inherently limited and conditional”
“6. The judge should have held that the expression “obviously defective or insufficient” (as appearing at [96] of the Supreme Court judgment and [52] and [54] of the judgment below) must entail an assessment which did not involve consideration of extraneous or external matters. Further the statement at [54] of the judgment that “… the statement that the applicant is an inventor is obviously defective” was wrong as a matter of law not least because it would not have been so obvious as stated at [52] of the Supreme Court judgment. 7. The judge was wrong to cite at [54] of the judgment an example of a situation which was ex facie “obviously defective” (X is the devisor and the applicant is the employer – which is clearly and obviously wrong) and then apply it to the instant case. The principle is accepted however that in some cases it is possible to make an assessment of rectitude in relation to a form 7 declaration. However, the judge fell into error by applying the principle (“a statement that the applicant believes a natural person or persons to be the inventor … cannot be “obviously defective”.”) to the example which he gave and then holding that he could apply that principle in the present case. He ought to have held that that the examiner could not go outside examining the words as appearing in form 7. Had he done so then he would have held that he could construe the words written in form 7 properly and would have determined the appeal in favour of the Appellant. 8. The judge was wrong in [23] to accept the Hearing Officer’s conclusion that s.117 of the Act cannot correct a mistake, and was wrong to accept Rule 49 had any relevance to the mistake in need of correction.”
“2. The main point of appeal is to seek clarity from the Court of Appeal on when the Comptroller may, if at all, look beyond the form in front of them. This is a compelling reason for an appeal. 3. The judge ‘left open’ the question of whether it is proper to have regard to other statements by Dr. Thaler in [59] – this is a fundamental issue that needs clarity from the Court of Appeal.”
“9. At [56] the judge was wrong not to recognise the difference in the belief of Dr. Thaler and the law. Dr. Thaler’s understanding of the law changed after the decision of the Supreme Court, and that is the relevant factor as to what he was obliged to share on form 7 under s. 13. The fact the law has not changed is not the point. 10. At [62] the judge was wrong to hold that a statement by the Appellant that a computer program devised by him was the inventor for the purposes of form 7 (and was thus an invalid declaration for the purposes of s13(2)) was a statement of inventorship when even if a computer program does devise inventions the computer program is still the invention of the devisor of the computer program. The inventor is the person who caused something which had never been made before to be made (it is accepted that this is gnomic, but it is valid none-the-less). Hence the Appellant was the inventor and the judge should have upheld that contention. Had he done so then the appeal would have been determined in his favour. The rule of law that a master is responsible also means the judge should have found that Dr. Thaler was entitled to make an application. 11. In the alternative, if contrary to the case of the Appellant so far expressed it would have been permissible to read the addendum, then; a. on its proper construction it still admitted of the possibility that Dr. Thaler was at least a co-inventor of any invention, and b. given that DABUS was not permitted to be named as an inventor, he was solely entitled, thus being, for the purposes of form 7, the sole inventor. Had the judge held that this contention was correct as a matter of law then he would have found that Dr.