Stephen Thaler v The Comptroller-General of Patents, Designs and Trade Marks

This judgment was handed down at 10.00 am on 21 November 2025 by circulation to the parties’ representatives by email. The Deputy Judge:

1. On 1 September 2025 I handed down my judgment ( [2025] EWHC 2202 (Ch) , “my Judgment”) on Dr Thaler’s appeal from the decision of Mr Andrew Bushell, a Hearing Officer acting for the Comptroller, dated 13 August 2024. For the reasons explained in my Judgment I dismissed Dr Thaler’s appeal.

2. Also on 1 September 2025 I made an order adjourning the form of order hearing to the first date convenient to the parties after 1 October 2025 (with time for lodging any Appellant’s Notice not running in the meantime) and gave the parties liberty to apply for the form of order hearing to be conducted on the papers.

3. The Comptroller indicated that he was content for the form of order hearing to be conducted on the papers but Dr Thaler indicated that he wanted an in person hearing. A hearing was arranged for 7 November 2025. Shortly beforehand the parties agreed an order, save for permission to appeal, and agreed that the hearing could be vacated and the issue of permission to appeal be dealt with on the papers.

4. Dr Thaler then sought an extension of time for providing grounds of appeal. It appears that Dr Thaler’s legal representatives had mistakenly thought that it was necessary to apply for permission to appeal to the Court of Appeal because any appeal would be a second appeal governed by CPR 52.7, and so had not prepared grounds of appeal to be submitted to me. In those circumstances, and given that Dr Thaler had changed his legal representatives following my Judgment, I asked Dr Thaler to provide draft grounds of appeal by 14 November 2025 and the Comptroller to submit any observations on those draft grounds by 19 November 2025. I indicated that I would give my decision on 21 November 2025, which would be the date from which time for filing an Appellant’s Notice would run.

5. In Smith International Inc. v Specialised Petroleum Services Group Ltd [2005] EWCA Civ 1357 the Court of Appeal explained that the second appeals provisions of s.55 Access to Justice Act 1999 and what was then CPR 52.13 (now CPR 52.7) do not apply to appeals within the scope of s.97(3) Patents Act 1977 . However, s.97(3) applies only to appeals from decisions of the Comptroller made under specified sections of the Act and to appeals where the ground of appeal is that the decision of the Patents Court is wrong in law. The decision of Mr Bushell was not made under any of the sections specified in s.97(3) and so I am only able to grant permission on grounds of appeal which allege that my Judgment was wrong in law. I must of course also be satisfied that an appeal on such grounds has a real prospect of success or there is some other compelling reason for an appeal (CPR 52.6).

6. Given the nature of the grounds of appeal submitted on behalf of Dr Thaler, which are lengthy and in places incoherent or misconceived, I have decided that it would be helpful to the parties, and to the Court of Appeal dealing with any application for permission to appeal that Dr Thaler may make to it, if I were to explain my reasons for refusing permission at greater length than would be possible on Form N460.

7. Dr Thaler’s grounds of appeal contain some introductory paragraphs, to which I will have to return. Paragraphs 4-5 are then headed “Ground 1”, paragraphs 6-8 are headed “Ground 2” and paragraphs 9-11 are headed “Ground 3”.

8. Ground 1 is said to relate to Issues 1 and 2. In fact, as I explained in paragraph 29 of my Judgment, Issue 2 was not live on the appeal before me. I also remind myself that, as I explained there, success on Issue 1 was of no avail to Dr Thaler unless he also succeeded on Issue 4.

9. Paragraphs 4 and 5 are 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.”

10. I shall start with paragraph 5. It must be remembered that Issue 1 was whether the Divisional was filed in time to benefit from divisional status. That turned on whether the Parent was deemed to be withdrawn on 17 June 2021 (the day after the prescribed period expired in respect of the Parent) or on 22 May 2022 (when Mr Jones issued his decision in respect of the Parent). As is apparent from paragraphs 30-49 of my Judgment, Issue 1 turned on the correct construction of s.13(2) . That Issue had nothing to do with the wording of a Form 7 or the contents of an addendum to a Form 7, let alone in the case of the Divisional. That is why I did not consider such matters when addressing Issue 1. Paragraph 5 of the grounds of appeal is irrelevant to Issue 1.

11. Paragraph 4 is at least directed at the correct target, namely the construction of s.13(2) . That is a matter of law. However, I am not persuaded that the grounds of appeal advanced have any real prospect of success. The first point which is sought to be made is that I gave “ insufficient weight to the proposition that there is nothing in which I held the 1977 Act itself which requires or specifies” the effect 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. I am not persuaded that there is any real prospect of success on an appeal on Issue 1.

12. Ground 2 is said to relate to Issue 4. Paragraphs 6-8 are as follows: “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.”

13. Paragraph 8 is irrelevant to Issue 4. In paragraph 23 of my Judgment I was reciting (rather than accepting) part of Mr Bushell’s decision relating to Issue 3. Issue 3, like Issue 2, was not live on this appeal.

14. Aspects of paragraphs 6 and 7 are very difficult to understand. In particular it is hard to ascertain what the second sentence of paragraph 6 is meant to mean, or what complaint is being advanced about the example I gave in paragraph 54 of my Judgment. However, as I understand it, 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. I am not persuaded that an appeal on this ground has any real prospect of success.

15. It is convenient now to deal with paragraphs 2-3 of the grounds of appeal. They are as follows: “2. The main point of appeal is to seek clarity from the Court of Appeal on when the Comptroller may, if at all, look beyond the form in front of them. This is a compelling reason for an appeal.

3. The judge ‘left open’ the question of whether it is proper to have regard to other statements by Dr. Thaler in [59] – this is a fundamental issue that needs clarity from the Court of Appeal.”

16. What I left open in paragraph 59 of my Judgment was the question of whether it was proper to have regard to statements by Dr Thaler in relation to other applications, even ones from the same family. As is apparent from paragraph 60 of my Judgment, I decided Issue 4 by reference only to statements made in or accompanying the 22 December 2023 Form 7 relating to the Divisional. It is not appropriate to give permission for the purpose of obtaining clarity from the Court of Appeal on a point which it was not necessary for me to decide in order to determine Issue 4 against Dr Thaler.

17. Paragraph 2 asserts, as I understand it, that a compelling reason for an appeal is to obtain clarity from the Court of Appeal on whether the Comptroller may consider material submitted with a Form 7 as well as the Form 7 itself. I have explained why I do not regard Ground 2 as having any real prospect of success and I do not think that this provides another compelling reason for an appeal. If the Court of Appeal thinks otherwise, it can grant permission on an application by Dr Thaler.

18. Ground 3 is said to relate to “the proper deviser” and appears also to relate to Issue 4. Paragraphs 9-11 are 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 s13(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 ).”

19. Paragraph 9 is misconceived. In paragraph 56 of my Judgment I said that it was possible that Dr Thaler’s belief had changed. That is why I went on in paragraph 60 to determine matters by reference only to the statements made in the documents filed on 22 December 2023.

20. As I understand paragraph 10, the argument is that I was wrong to take statements made by Dr Thaler at face value and should have held that, notwithstanding his statements identifying DABUS as the actual deviser of the inventions, I should have held that he was the actual deviser. I am not convinced that this is an allegation that I erred in law, nor do I have any recollection of the point being argued before me. In any event I am not persuaded that the point has any real prospect of success on appeal.

21. Paragraph 11 suggests that Dr Thaler’s statements in the addendum can properly be read as making it possible that Dr Thaler was a co-inventor of the inventions. I can only say that I disagree. Even if this is an allegation that I erred in law I am not persuaded that the point has any real prospect of success on appeal.

22. I therefore refuse permission to appeal. If Dr Thaler wishes to appeal he will need to seek permission from the Court of Appeal.