The End of DABUS?
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Jane Lambert
Patents Court (Michael Tappin KC) Thaler v The Comptroller-General of Patents, Designs and Trade Marks (Re Permission to Appeal) [2025] EWHC 3072 (Ch) (21 Nov 2025)
Patents Court (Michael Tappin KC) Thaler v The Comptroller-General of Patents, Designs and Trade Marks (Re Permission to Appeal) [2025] EWHC 3072 (Ch) (21 Nov 2025)
In Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 2202 (Ch) (1 Sept 2025), Mr Michael Tappin KC, sitting as a deputy judge of the High Court, dismissed an appeal by Dr Stephen Thaler ("Dr Thaler") against the decision of Mr Andrew Bushell in Thaler v Comptroller-General of Patents, Designs and Trade Marks O/0764/24 of 24 Aug 2024. I discussed that case in The Return of DABUS on 7 Sept 2025. The case note summarizes the history of the litigation and links to other articles that I have written about DABUS ("Device for Autonomous Bootstrapping of Unified Sentience") and the efforts of its creator, Dr Thaler, to obtain patents for DABUS's inventions.
Dr Thaler's Application for Permission to Appeal to the Court of Appeal
Dr Thaler sought Mr Tappin's permission to appeal from the deputy judge's decision to the Court of Appeal. His application was unsuccessful. In Thaler v The Comptroller-General of Patents, Designs and Trade Marks (Re Permission to Appeal) [2025] EWHC 3072 (Ch) (21 Nov 2025), Mr Tappin set out his reasons for refusing Dr Thaler's application at greater length than would have been possible on Form 460.
Dr Thaler sought Mr Tappin's permission to appeal from the deputy judge's decision to the Court of Appeal. His application was unsuccessful. In Thaler v The Comptroller-General of Patents, Designs and Trade Marks (Re Permission to Appeal) [2025] EWHC 3072 (Ch) (21 Nov 2025), Mr Tappin set out his reasons for refusing Dr Thaler's application at greater length than would have been possible on Form 460.
The Issues
It will be recalled that Mr Bushell identified the following issues:
"(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)?"
On appeal, Mr Tappin focused on Issues 1 and 4. He explained in para [8] of the permission to appeal hearing that Issue 2 was not live on the appeal before him and that success on Issue 1 was of no avail to Dr Thaler unless he also succeeded on Issue 4.
Grounds of Appeal
Dr Thaler drafted his grounds of appeal by reference to the issues that had been identified by Mr Bushell. Ground 1 related to Issues 1 and 2 and Grounds 2 and 3 to Issue 4.
Ground 1
Ground 1 was as follows:
"4. Concerning issues 1 & 2, the judge erred in law in upholding the Hearing Officer's construction of s.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 the s.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'. The error of the judge was to construe s.13 (2) without recourse to the Human Rights Act in a manner so as not to enable property rights to be preserved – if it could have been and not to endorse a situation of unconditional depravation. Had the judge decided correctly then he would have held that the approach to be taken was to enable the application to proceed.
5. In aid of the foregoing the judge was wrong to consider matters falling outside the form 7 as directed by the Comptroller under s.123 (2A) in that he gave undue or any weight to the addendum in the form 7 submitted by the Appellant. The proper approach which the hearing officer ought to have taken (and the judge ought to have ruled was the appropriate action) was to consider only what had been declared on form 7 and draw attention to any obviously and clearly incorrect statements. The hearing officer could not go outside the strict remit of form 7. In support of the foregoing the judge stated at [42] that:-
'… s.13 (2) … only requires there to be, in fact [law or both] …, a failure to comply with the requirements of … subsection [2]. 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.'
That statement is a holding of law. The judge erred in making that holding. The correct approach to have taken would be to construe s.13 (2) as causing the tribunal to ask whether what had been submitted was obviously wrong and capable of being assessed as being obviously wrong on the face of the document (in this case the form 7). The suggestion that the proper construction of s.13 (2) did not imply a duty only to object in clear and unambiguous cases means that the relevant reader of the form 7 is bound to have regard to extraneous matters when construing the form 7. The approach of the judge was inconsistent with the cited statement of Lord Kitchin at [96] of the Supreme Court Judgment, it is no function of the Comptroller to investigate or question the form's statement of facts."
5. In aid of the foregoing the judge was wrong to consider matters falling outside the form 7 as directed by the Comptroller under s.123 (2A) in that he gave undue or any weight to the addendum in the form 7 submitted by the Appellant. The proper approach which the hearing officer ought to have taken (and the judge ought to have ruled was the appropriate action) was to consider only what had been declared on form 7 and draw attention to any obviously and clearly incorrect statements. The hearing officer could not go outside the strict remit of form 7. In support of the foregoing the judge stated at [42] that:-
'… s.13 (2) … only requires there to be, in fact [law or both] …, a failure to comply with the requirements of … subsection [2]. 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.'
That statement is a holding of law. The judge erred in making that holding. The correct approach to have taken would be to construe s.13 (2) as causing the tribunal to ask whether what had been submitted was obviously wrong and capable of being assessed as being obviously wrong on the face of the document (in this case the form 7). The suggestion that the proper construction of s.13 (2) did not imply a duty only to object in clear and unambiguous cases means that the relevant reader of the form 7 is bound to have regard to extraneous matters when construing the form 7. The approach of the judge was inconsistent with the cited statement of Lord Kitchin at [96] of the Supreme Court Judgment, it is no function of the Comptroller to investigate or question the form's statement of facts."
Mr Tappin started with para 5 of Dr Thaler's grounds. He recalled that Issue 1 turned on whether the parent application was deemed to be withdrawn on 17 June 2021 on 22 May 2022. That depended on the correct construction of s.13 (2) of the Patents Act 1977. It had nothing to do with the wording of Form 7 or the contents of an addendum to a Form 7. Paragraph 5 of Dr Thaler's grounds of appeal was irrelevant to Issue 1.
Paragraph 4 was a matter of law. The deputy judge was not persuaded that the ground of appeal had any prospect of success. He explained in para [11]:
"The first point which is sought to be made is that I gave "insufficient weight to the proposition that there is nothing in the 1977 Act itself which requires or specifies" the effect which I held s.13(2) to have. In my Judgment I explained why the language of s.13 (2), together with other relevant considerations, led me to my conclusion. I do not regard the bald assertion made in paragraph 4 as giving rise to a real prospect that my reasoning or conclusion will be shown to be wrong. The second point concerns the Human Rights Act 1988. I do not agree that in my Judgment I construed s.13 (2) "without recourse to the Human Rights Act in a manner so as not to enable property rights to be preserved". On the contrary, I had regard to the Human Rights Act and explained why the property rights relied on were ones that were dependent on compliance with the statutory scheme."
"The first point which is sought to be made is that I gave "insufficient weight to the proposition that there is nothing in the 1977 Act itself which requires or specifies" the effect which I held s.13(2) to have. In my Judgment I explained why the language of s.13 (2), together with other relevant considerations, led me to my conclusion. I do not regard the bald assertion made in paragraph 4 as giving rise to a real prospect that my reasoning or conclusion will be shown to be wrong. The second point concerns the Human Rights Act 1988. I do not agree that in my Judgment I construed s.13 (2) "without recourse to the Human Rights Act in a manner so as not to enable property rights to be preserved". On the contrary, I had regard to the Human Rights Act and explained why the property rights relied on were ones that were dependent on compliance with the statutory scheme."
Ground 2
This ground consisted of the following paragraphs:
"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."
"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."
Starting with para 8, Mr Tappin said that that paragraph was irrelevant to Issue 4 and that Issue 3, like Issue 2, was not live on appeal. He found aspects of paragraphs 6 and 7 very difficult to understand for the following reasons:
".... the point which these paragraphs are trying to raise is that it is wrong in law to consider any material which is not on the face of Form 7 itself when addressing compliance with s.13 (2) and so it was wrong for me to have regard to the addendum to Dr Thaler's Form 7 of 22 December 2023. That is not a point that was raised by Dr Thaler before me, in his grounds of appeal from Mr Bushell's decision or otherwise. Nor does Dr Thaler provide any basis for his assertion that it is wrong in law for the Comptroller to consider, when addressing compliance with s.13 (2), material submitted together with the Form 7 as an addendum to it."
Accordingly, he was not persuaded that an appeal on this ground had any real prospect of success.".... the point which these paragraphs are trying to raise is that it is wrong in law to consider any material which is not on the face of Form 7 itself when addressing compliance with s.13 (2) and so it was wrong for me to have regard to the addendum to Dr Thaler's Form 7 of 22 December 2023. That is not a point that was raised by Dr Thaler before me, in his grounds of appeal from Mr Bushell's decision or otherwise. Nor does Dr Thaler provide any basis for his assertion that it is wrong in law for the Comptroller to consider, when addressing compliance with s.13 (2), material submitted together with the Form 7 as an addendum to it."
Ground 3
This was as follows:
"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 s.13 (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. Thaler was correct to name himself as the inventor pursuant to section 7 (2) (a)."
The learned deputy judge said that paragraph 9 was misconceived. He had said that it was possible that Dr Thaler's belief had changed, and that was why he proceeded to determine matters by reference to statements made in the documents filed on 22 Dec 2023 only. As to paragraph 10, if it was alleged that he should not have taken Dr Thaler's statements at face value on whether he or DABUS was the actual deviser, it was an error in law. In any case, the point had not been argued on appeal. Finally, Mr Tappin was not persuaded by the submissions in paragraph 11 and in any case they had no real prospect of success.
Comment
In refusing permission to appeal, Mr Tappin said that if Dr Thaler wished to appeal he would need permission from the Court of Appeal. That may not be an entirely forlorn cause. The last time Dr Thaler was there, Lord Justice Birss delivered a powerful dissenting judgment between paras [1] and [98] of Thaler v Comptroller General of Patents Trade Marks and Designs [2022] Bus LR 375, [2021] RPC 19, [2021] EWCA Civ 1374. Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.
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