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

On 17 October 2018 Dr Thaler filed at the UK Intellectual Property Office (“the UKIPO”) an application for a UK patent for what is said to be an invention consisting of a new kind of food or beverage container. On 7 November 2018 Dr Thaler filed another application for a UK patent for what is said to be an invention consisting of a new kind of light beacon and a new way of attracting attention in an emergency.

In each case, the request for grant form stated that Dr Thaler was not the inventor of the invention. The examiner informed Dr Thaler that he would need to file a statement of inventorship for each application within 16 months of the filing date in accordance with s.13(2) Patents Act 1977 (“the Act”). On 23 July 2019 Dr Thaler filed a Form 7 for each invention identifying the inventor as “DABUS” and indicating that he had a right to be granted a patent “by ownership of the creativity machine DABUS”. The Forms 7 were accompanied by a statement containing factual assertions and legal submissions in support of Dr Thaler’s position. In response to objection by the examiner, on 28 August 2019 Dr Thaler filed amended Forms 7 containing the additional statement that “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”.

The matter progressed to a hearing before Mr Huw Jones, a Hearing Officer acting for the Comptroller. In his decision dated 4 December 2019 (BL O/741/19) Mr Jones held that DABUS could not be an inventor within the meaning of s.7 and s.13 of the Act because it was not a person and, even if it could, ownership of DABUS did not entitle Dr Thaler to an invention created by DABUS. Mr Jones held that, as a result, Dr Thaler had not complied with the requirements of s.13(2) and that the applications would be taken to be withdrawn at the expiry of the prescribed period, i.e. that specified by rule 10(3) Patents Rules 2007 (“the Rules”).

Dr Thaler’s appeal from that decision was dismissed by Marcus Smith J on 21 September 2020: [2020] EWHC 2412 (Pat). On 21 September 2021 a second appeal to the Court of Appeal was dismissed (Arnold and Elisabeth Laing LJJ; Birss LJ dissenting, but not on the question of whether DABUS could be an inventor): [2021] EWCA Civ 1374. The Supreme Court granted permission to appeal but dismissed the appeal on 20 December 2023 for reasons given by Lord Kitchin, with whom all the other members of the Court agreed: [2023] UKSC 49.

Those proceedings were conducted on the basis that the factual assertions made by Dr Thaler in the document accompanying his Forms 7 were true. The entire statement is set out in the judgment of Marcus Smith J at [5], but it included the following:

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

The invention disclosed and claimed in this British patent application was generated by a specific machine called “DABUS”…

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 teaching had been given to a person, that person would meet inventorship criteria as inventor.

In some cases of machine invention, a natural person might qualify as inventor by virtue of having exhibited inventive skill in developing a program to solve a particular problem, or by skilfully selecting data to provide to a machine, or by identifying the output of a machine as inventive. However, 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.”

Matters were summarised by Lord Kitchin at [51], [52] and [55]:

“51.

Here Dr Thaler has made it clear that he does not claim to be and indeed is not the inventor of any inventions described or disclosed in the applications; that it was and remains his belief and case that the inventions were made by DABUS, a machine powered by AI; and that DABUS ought therefore to be named and recognised as inventor. I would also emphasise, as has the Comptroller, that the UKIPO did not and could not go behind those assertions, so far as they constituted assertions of fact, in dealing with these applications. The question whether DABUS in fact created and generated the inventions described in the applications has therefore never been investigated. The applications have been considered and assessed (and the appeals have been decided) on the basis that the factual assertions made by Dr Thaler are correct.

52.

It follows but is important to reiterate nonetheless that, in this jurisdiction, it is not and has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different.

…

55.

…Dr Thaler has argued throughout that the technical advances and the new products described and disclosed in the applications were devised by DABUS, and that DABUS was their inventor. As I have indicated, the Comptroller accepts for the purpose of these proceedings the substance of the factual case advanced by Dr Thaler, namely that DABUS created or generated the technical advances described and disclosed in the applications and did so autonomously using AI…”