CH-2024-000239 - [2025] EWHC 2202 (Ch)

On 10 May 2022 Dr Thaler filed application no. GB2206827.4 (“the Divisional”) as a divisional application from the Parent and claiming an earliest priority date of 17 October 2018. The application was accompanied by a Form 7 including a statement that “the applicant identifies no person or persons whom he believes to be an inventor” and an indication that Dr Thaler claimed to be entitled to apply for a patent by virtue of s.7(2)(b) of the Act. The examiner objected to that Form 7 as not complying with the requirements of s.13(2). On 8 July 2022 Dr Thaler filed an amended Form 7 in which he instead claimed to be entitled by virtue of s.7(2)(c), accompanied by a letter which stated that Dr Thaler did not believe that he was the inventor in accordance with the requirements of the Act.

On 22 December 2023 (two days after the Supreme Court judgment) Dr Thaler filed a further Form 7 in respect of the Divisional. That Form 7 named Dr Thaler as the inventor. It was accompanied by an amended first page of the application in which text had been added to the start of the description as follows: “The inventions disclosed in this application are AI-generated inventions, which were conceived autonomously by the artificial intelligence machine DABUS…. Dr Thaler, the applicant, is the owner of DABUS.” There was also an addendum to the Form 7 which included the following text:

“A machine called “DABUS” conceived of the present invention

The invention disclosed and claimed in this European [sic] patent application was generated by a specific machine called “DABUS”. Dr Thaler owns DABUS, built DABUS, trained DABUS and used DABUS. Dr Thaler nevertheless submits he is not an inventor under traditional criteria, because in the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the training Dr Thaler provided DABUS had been given to a person, that person would meet inventorship criteria as inventor. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.”

The examiner again objected that the Form 7 did not meet the requirements of s.13(2) and also that it had been filed out of time. The matter proceeded to a hearing before Mr Bushell on 23 May 2024.