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

Permission to appeal requires grounds showing a real prospect of success or another compelling reason. On an appeal from a Comptroller’s decision, the statutory route determines whether the ordinary second-appeal restrictions apply and confines the permissible grounds.

A ground must address an actual issue decided by the court. Permission is not granted merely to obtain appellate clarification of a question the court below deliberately left open, or on an argument that was irrelevant, incoherent, misconceived or not properly advanced below.

Dr Stephen Thaler appealed from the decision of a Hearing Officer acting for the Comptroller. On 1 September 2025, the Deputy Judge dismissed that appeal: [2025] EWHC 2202 (Ch).

Dr Thaler sought permission to appeal to the Court of Appeal. His proposed grounds challenged the construction of section 13(2) of the Patents Act 1977, the material that could be considered with Form 7, and the treatment of his assertions concerning the inventor. The Deputy Judge considered whether the grounds concerned issues decided in the earlier judgment and whether they had a real prospect of success or raised another compelling reason.

1. Permission refused. The proposed appeal did not satisfy the permission threshold under rule 52.6 of the Civil Procedure Rules 1998.
2. Under section 97(3) of the Patents Act 1977, the second-appeal provisions in section 55 of the Access to Justice Act 1999 and rule 52.7 of the Civil Procedure Rules 1998 did not apply to an appeal within that statutory scope. The present appeal was outside section 97(3), because the Hearing Officer’s decision was not made under one of the specified sections. Permission could therefore be granted only on grounds alleging that the Deputy Judge’s judgment was wrong in law.
3. Ground 1 did not have a real prospect of success. Issue 2 was not live, and success on Issue 1 would have been insufficient without success on Issue 4. The construction of section 13(2) was a question of law, but the assertion that the statute did not expressly specify the consequence identified by the judgment did not undermine its reasoning. The judgment had also considered the Human Rights Act 1998 and explained why the claimed property rights were conditional on compliance with the statutory scheme.
4. The complaint that the Comptroller could consider only the face of Form 7 was irrelevant to Issue 1. The challenge to material submitted in an addendum had not been raised below and was unsupported. The reference to section 117 and rule 49 concerned Issue 3, which was not live on the appeal.
5. The proposed appeal could not properly be brought merely to obtain clarification on whether material from other applications could be considered. That question had been left open because it was unnecessary to decide Issue 4, which was determined by reference to the Form 7 and accompanying material relating to the divisional application.
6. The remaining arguments concerning inventorship, the meaning of Dr Thaler’s statements and the addendum were not shown to disclose an error of law or a real prospect of success. Permission was refused, with any further application to be made to the Court of Appeal.

• High Court (Patents Court): The Deputy Judge dismissed Dr Thaler’s appeal from the Hearing Officer’s decision on 1 September 2025 in [2025] EWHC 2202 (Ch), then refused permission to appeal.