Stephen Thaler v The Comptroller-General of Patents, Designs and Trade Marks

Under section 13(2) of the Patents Act 1977, an application is deemed withdrawn when the applicant fails, within the prescribed period, to file a compliant statement of inventorship and entitlement. Withdrawal does not await a decision by the UK Intellectual Property Office. The statutory scheme, including retrospective extensions of time, provides the relevant safeguards.

A statement naming a natural person as inventor may nevertheless be obviously defective where the applicant’s own disclosed account identifies an AI system as the autonomous and actual deviser and describes the applicant’s contribution as insufficient for inventorship. The UK Intellectual Property Office may reject such a statement without investigating the truth of the underlying factual account.

Dr Stephen Thaler appealed from a decision of a UK Intellectual Property Office hearing officer concerning a divisional patent application. The application claimed divisional status from a parent application and initially identified no natural person as inventor, while later naming Dr Thaler as inventor and stating that the invention had been autonomously conceived by the AI machine DABUS.

The hearing officer held that the parent application had been deemed withdrawn before the divisional was filed and that the later statement of inventorship did not comply with section 13(2) of the Patents Act 1977. The appeal concerned whether deemed withdrawal required a later UKIPO decision and whether the later statement was obviously defective.

1. Appeal dismissed. The appeal failed on both issues argued.
2. Section 13(2) of the Patents Act 1977 operates automatically. An application is deemed withdrawn when, in fact and in law, the applicant has failed to file the required statement within the prescribed period. A later decision confirming non-compliance does not determine when withdrawal took effect.
3. The prescribed period was governed by rules 10(3) and 68(2) of the Patents Rules 2007. Rules 108(2) and 108(3) provide the statutory mechanism for retrospective and further extensions. The possibility that an application remains uncertain while an extension is sought does not alter the construction of section 13(2).
4. The statutory scheme supplies common deadlines and limited extension powers. It does not permit an applicant to postpone deemed withdrawal by requesting a hearing or pursuing an appeal. The court rejected the suggested distinction between clear and ambiguous failures.
5. The Human Rights Act argument failed. Patent applications are conditional rights created by legislation. Loss resulting from failure to satisfy the statutory scheme was not a deprivation of possessions. Section 3(1) of the Human Rights Act 1998 did not require the scheme to be construed in favour of applicants, since it balances applicants’ interests against other applicants and the public.
6. Under section 7 of the Patents Act 1977, the inventor is the actual deviser. Although the UKIPO does not investigate genuine and plausible statements of inventorship, it may reject one that is obviously defective on the information supplied by the applicant.
7. On the statements accompanying the later Form 7, DABUS was said to have conceived the inventions autonomously and independently, while Dr Thaler stated that he was not an inventor under traditional criteria. Those statements clearly identified DABUS, not Dr Thaler, as the actual deviser. His statement that he was the inventor was therefore obviously defective and did not comply with section 13(2).
8. The court declined to decide what contribution is sufficient to make a natural person an inventor of an AI-generated invention. Foreign materials arose under different legislative schemes and did not require resolution of that question.

• High Court (Patents Court): appeal from the UK Intellectual Property Office decision of 13 August 2024 (BL O/0764/24); appeal dismissed.
• Court of Appeal: an earlier appeal in the same DABUS litigation was dismissed on 21 September 2021: [2021] EWCA Civ 1374.
• Supreme Court: the earlier appeal was dismissed on 20 December 2023: [2023] UKSC 49.