The Return of DABUS

Nucleus of 103P/Hartley as imaged during a spacecraft flyby

Author NASA/JPL-Caltech/UMD  Licence Public Domain  Source Wikimedia Commons

 

Jane Lambert

Patents Court (Michael Tappin KC) Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 2202 (Ch) (1 Sept 2025)

DABUS stands for "Device for Autonomous Bootstrapping of Unified Sentience".  According to its creator, Stephen Thaler, DABUS invented a new kind of food or beverage container and a new kind of light beacon and a new way of attracting attention in an emergency. Dr Thaler has tried to obtain patents for DABUS's inventions but he has not had much success outside South Africa. That is because most of the world's intellectual property offices, including our own, require an inventor to be a natural person.  I have written a lot of articles about DABUS and Dr Thaler's patent applications.  Readers are referred to Artificial Intelligence -The DABUS Decisions, 19 Feb 2020, DABUS in the Supreme Court, 12 April 2023 and The Supreme Court's Judgment in DABUS, 25 Dec 2023.  The issue of whether a patent can be granted for an "invention [that] was autonomously generated by an artificial intelligence" has returned to our jurisdiction like a wandering comet, less than two years after the Supreme Court was supposed to have settled the matter.

The International Application

On 17 Sept 2019, Dr Thaler filed an international patent application under the Patent Co-operation Treaty ("PCT"), for a food container and devices and methods for attracting enhanced attention, claiming priority from EP 3 564 144 A1 and EP 3 563 896 A1. Its international application number was PCT/IB2019/057809, and its publication number was WO 2020/074499.

It entered the national phase on 16 Apr 2021 and was given application number GB2105428.3.  The United Kingdom Intellectual Property Office ("the IPO") issued a preliminary examination report on 2  Aug 2021.  The report required Dr Thaler to complete and lodge Patents Form 7 - Statement of inventorship and of right to grant of a patent by 2 Oct 2021 as required by s.13 (2) of the Patents Act 1977 in accordance with rule 10 of the Patents Rules 2007.  The IPO indicated that the deadline could be extended for another two months upon application.

On 1 Oct 2021, Dr Thaler replied that he did not believe that he was obliged to file Form 7 because s.89B (1) (c) provides that where an international application for a UK patent is accorded a filing date under the Patent Co-operation Treaty, any statement of the name of the inventor should be treated as a statement filed under s.13 (2).  The IPO responded on 27 Oct 2021 that it agreed with Dr Thaler's interpretation of s.89B (1) (c) but that provision did not absolve him from completing Form 7.  The form also required a statement of how the applicant acquired the right to be granted a patent from the inventor as well as the inventor's name.  The IPO repeated that the period for filing Form 7 could be extended under 2 Dec 2021 on application, but warned that the application might be refused if Dr Thaler failed to fill in and file Form 7 by that date.

On 29 Nov 2021, Dr Thaler reiterated his position and requested a hearing. In its reply of 15 Feb 2022, the IPO repeated its view that s.89B (1) (c) did not relieve Dr Thaler of his obligation to fill in and file Form 7.  On 15 Feb 2022, the IPO warned Dr Thaler that it was minded to refuse his application. On 19 Apr 2022, Dr Thaler attempted to lodge what he described as an "auxiliary request" in Form 7, which stated that "the applicant identified no person or persons whom he believed to be an inventor" and that Dr Thaler was entitled to apply for a patent by virtue of s.7 (2) (b) of the Act.

The Hearing before Mr Jones

A hearing took place before Huw Jones on 26 Apr 2022.  In Thaler v Comptroller-General of Patents Designs and Trade Marks BL O/447/22 24 May 2022, Mr Jones held that although s.89B (1) (c) required the IPO to treat a statement made in the international phase as if it had been made on Form 7, it did not prevent the IPO from examining the indication of an inventor in an international application upon its entry into the national phase.  As the Court of Appeal had held in Thaler v Comptroller of Patents, Trade Marks and Designs [2021] EWCA Civ 1374 (21 Sep 2021) that the naming of DABUS as an inventor did not meet the requirements of s.13 (2) of the Act, and as Form 7 had in any case been served out of time, Mr Jones had to treat GB2105428.3 as having been withdrawn.   The register was updated to state that the patent was terminated with effect from 25 May 2022.

After the Supreme Court had delivered its judgment in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 Dec 2023), the Intellectual Property Office backdated the deemed withdrawal of GB2105428.3, Dr Thaler's international application, from 25 May 2022 to 17 June 2021 on the ground that rule 68 (2) (b) requires compliance with s.13 (2) within 2 months of the date on which the national phase begins.

The Divisional Application

On 10 May 2022, Dr Thaler filed application number GB2206827.4 as a divisional from GB2105428.3 with a Form 7 stating that he identified no person or persons whom he believed to be an inventor, and that he claimed to be entitled to a patent by virtue of s.7 (2) (b) of the Act.   This was before the IPO had backdated the deemed withdrawal of GB2105428.3.   The examiner objected to Dr Thaler's statement in Form 7 on the ground that it did not comply with s.13 (2). On 8 July 2022, Dr Thaler filed an amended Form 7 in which he claimed to be entitled to the patent under s.7 (2) (c) with a letter stating that he did not believe that he was the inventor in accordance with the Act.

On 22 Dec 2023, Dr Thaler filed a further Form 7 in which he claimed to be the inventor.  However, this was qualified (if not contradicted) by a statement that the invention was generated by a specific machine called "DABUS".  He also stated in an addendum to Form 7 that he was not an inventor under traditional criteria but affirmed that he owned and had built and trained DABUS.  The examiner objected to the divisional on the ground that it had been filed out of time and did not meet the requirements of s.13 (2).

The Hearing before Mr Bushell

Dr Thaler appealed to the Comptroller against the rejection of his divisional application.   His appeal came before Andrew Busehell on 23 May 2024.   The hearing officer handed down his decision in Thaler v Comptroller-General of Patents, Designs and Trade Marks  O/0764/24 on 24 Aug 2024. Mr Bushell set out the issues that he had to decide in para [10] of his decision:

• "Can divisional application GB2206827.4 be deemed to have been filed on time given its parent application GB2105428.3 was retrospectively withdrawn prior to the date on which it was lodged? 
• If GB2206827.4 is taken to have been filed on time, should it be refused given the compliance period for placing the application in order has expired?  
• Can the latest Form 7 filed on the divisional application on 22 December 2023 be deemed to have been filed on time?
• If the Form 7 is taken to be filed on time, does it meet the requirements of s13 (2) of the Act?"

Mr Bushell held that GB2206827.4 had been filed out of time. Its application was filed on 10 May 2022, which was after 17 June 2021 when GB2105428.3 was deemed retrospectively to have been withdrawn. The hearing officer observed that rule 19 (2) (a) of the Patents Rules 2007 enables a divisional application to be filed from an earlier application under s.15 (9) of the Act only if the earlier application has not been terminated or withdrawn.  Mr Jones had held that the earlier patent should be treated as withdrawn because Dr Thaler had not complied with s.13 (2), but the IPO did not backdate the withdrawal until after the Supreme Court had ruled on the patentability of machine inventions.  As it was clear from the Supreme Court's judgment that s.13 (2) had not been complied with, Mr Bushell determined that rule 68 (2) (b) applied ex tunc, that is to say, with immediate effect.

Having decided that GB2206827.4 was filed out of time, Mr Bushell did not have to decide the second issue.

As GB2206827.4 was deemed to have been filed out of time, it lost its priority date. That meant that the time for complying with s.13 (2) changed from 16 months from 17 Sept 2019 under rule 10 (3) (b) to 16 months from 10 May 2022 under rule 10 (3) (a).  On the face of it, the form filed on 22 Dec 2023 was out of time.  However, Dr Thaler argued that the form should be regarded as an amendment of earlier forms that had been served in time.  Referring to Payne's Application [1985] RPC 193, the hearing officer rejected that argument.  In his judgment, s.117 could be used to correct minor grammatical or stylistic errors but not to make substantive amendments.  Finally, Dr Thaler submitted that the IPO had erred in not objecting to the form that was submitted on 8 July 2022 and that time should be extended under rule 107 (3) (b) to enable him to comply with s.13 (2).  Mr Bushell decided to address Issue 4, which was whether the latest version of Form 7 complied with that section.  He reasoned that there was little point in extending time if that form did not comply. 

The form filed on 22 Dec 2023 contradicted the previous ones in that Dr Thaler had claimed not to be the inventor.  In the hearing officer's view, Dr Thaler did not believe that the latest version of Form 7 was true.   Accordingly, s.13 (2) would not have been satisfied.

Returning to Issue 3, there was no point in extending time for complying with s.13 (2) as Dr Thaler had not met that provision's requirements.  Mr Bushell dismissed his appeal.

The Appeal

Dr Thaler appealed to the Patents Court.  The appeal was heard by Michael Tappin KC sitting as a deputy judge of the High Court.  Dr Thaler argued that the hearing officer had been wrong to find that an international application would be deemed to have been withdrawn at the end of 2 months from the date on which the national phase began if s.13 (2) had not been complied with during that time.  In his submission, a deemed withdrawal could come into effect only after a finding of non-compliance had been made.  He also contended that Mr Bushell had been wrong to treat his statement of inventorship of 22 Dec 2022 as "obviously defective."

At para [65] of his judgment in Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 2202 (Ch), which he handed down on 1 Sept 2025, Mr Tappin dismissed Dr Thaler's appeal.   

As to Dr Thaler's first point, Mr Tappin said at para [36] that there was nothing in s.13 (2) to suggest that an application should be taken to have been withdrawn only after the IPO has considered the matter and concluded that the applicant has not complied with the subsection. On the contrary, in the deputy judge's judgment, s.13 (2) clearly indicated that nothing further was required, beyond a failure to comply with the requirements of the subsection, for the application to be taken as having been withdrawn.

Dr Thaler also argued that the deemed withdrawal of his application violated his right to the peaceful enjoyment of his possessions under art 1 of the First Protocol of the Convention for the Protection of Human Rights and Fundamental Freedoms.  Mr Tappin replied that the possessions relied on by Dr Thaler were rights which were inherently limited and conditional. They arose under a legislative scheme and were subject to the provisions of that scheme. The possession was a right which existed and had value only to the extent that the requirements of the scheme were satisfied.

Turning to Dr Thaler's second point, the deputy judge noted that s.7 (3) of the Patents Act 1977 defined an "inventor" as "the actual deviser of the invention."  In all his previous filings of Form 7 and other communications with the IPO, Dr Thaler had identified DABUS as the deviser of the invention. Even the addendum to the form that Dr Thales filed on 22 Dec 2022 stated that he was not an inventor under traditional criteria.  In the circumstances, the IPO was right to regard that form as "obviously defective."

Comment

As long ago as 1988, Parliament provided that "[i]n the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken" (see s.9 (3) of the Copyright, Designs and Patents Act 1988).  At para [52] of his judgment in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, Lord Kitchin said that the outcome of the proceedings before him might well have been different had Dr Thaler contended that he was the inventor and that DABUS was a highly sophisticated tool which he had used to create the invention.   

Mr Tappin noted that the United States Patent and Trademark Office 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 Feb 2024, (Published Document: 2024-02623 (89 FR 10043) in particular section IV, including the guiding principles in part B thereof).  He added that the German Federal Supreme Court had accepted Dr Thaler as the inventor together with a statement that he had "prompted [or caused] the artificial intelligence DABUS to generate the invention" in X ZB 5/22 on 11 June 2024. The Swiss Federal Administrative Court held that a natural person qualified as a co-inventor if he or she influenced an AI system by contributing to the data processing that led to an AI-generated invention in B-2532/2025 on 26 June 2025.

The learned deputy judge reflected at [64] that it might be that consideration should be given as to whether provision ought to be made requiring an AI-generated invention to be identified as such, as the United States had done, but that was not a matter for his lordship. 

Anyone wishing to discuss this case note is welcome to call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form at any other time.