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

On 17 September 2019 Dr Thaler filed an International Patent Application under the Patent Co-operation Treaty, claiming priority from two European applications filed concurrently with the two UK patent applications considered by the UKIPO and the courts as described above. That application was given the number PCT/IB2019/057809 and was later published as WO 2020/074499. On 16 April 2021 that application entered the national phase in the UK as GB2105428.3 (“the Parent”).

On 2 August 2021 the UKIPO issued a preliminary examination report in respect of the Parent. That report required a Form 7 to be filed by 2 October 2021 and indicated that that deadline could be extended by two months on application.

In a response dated 1 October 2021, Dr Thaler took the position that, according to s.89B(1)(c) of the Act, the statement of inventorship made in the international phase (which identified the inventor as DABUS) should be treated as a statement filed under s.13(2). In a letter dated 27 October 2021 the UKIPO indicated that it agreed with that, but that Dr Thaler still needed to file a Form 7 which (i) identified a person whom he believed to be the inventor and (ii) indicated how he derived rights from such a person. The letter said that the period for serving such a Form 7 could be extended until 2 December 2021 on application. It concluded: “If you do not meet this requirement by that date, the application may be refused”.

In a response dated 29 November 2021, Dr Thaler reiterated his position and requested a hearing. On 15 February 2022 the UKIPO responded, reiterating its position that the effect of s.89B(1)(c) did not absolve Dr Thaler from satisfying the requirements of s.13(2). The letter concluded by saying that, for the reasons given, “we are minded to refuse this application” and indicating that Dr Thaler had the right to be heard on the effect of s.89B(1)(c).

A hearing was held before Mr Jones (as Hearing Officer) on 26 April 2022, shortly before which (on 19 April 2022) Dr Thaler submitted an “auxiliary request” Form 7 which stated that “the applicant identifies no person or persons whom he believes to be an inventor” and indicated that Dr Thaler claimed to be entitled to apply for a patent by virtue of s.7(2)(b) of the Act.

In a decision issued on 24 May 2022 (BL O/447/22) Mr Jones decided that s.89B(1)(c) required the UKIPO to treat information provided on the statement of inventorship made in the international phase as if it had been provided on Form 7 but did not preclude the UKIPO from examining whether the requirements of s.13(2) had been complied with. He held that the information provided did not comply with the provisions of the Act (and in any event the “auxiliary request” Form 7 had been filed out of time) and so the Parent was “taken to be withdrawn”. There was no appeal against that decision. However, and despite Mr Jones having rejected the submission that he should delay issuing his decision pending the outcome of proceedings in the Supreme Court, formal action following his decision was stayed until after the judgment of the Supreme Court was delivered. Following that judgment, the register was updated to state that the Parent was terminated as of 25 May 2022.