No take-backs for Thaler on AI inventorship claim
Jocelyn Bosse
No take-backs for Thaler on AI inventorship claim
Jocelyn Bosse Tuesday, September 02, 2025 - AI inventor, Artificial Intelligence, Jocelyn Bosse, patents
Apparently Dr Stephen Thaler hasn't lost interest in generating patent case law in the UK. On Monday, the High Court of England & Wales handed down its judgment in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 2202 (Ch), finding that Dr Thaler could not turn around and claim to be the inventor of the inventions that he previously claimed were actually invented by the AI machine, DABUS.
After Thaler changed his story on inventorship, the High Court put its paw down. Photo by Ruca Souza via Pexels.
Background
Dr Thaler has been a party to many cases around the world on AI and IP, from a decision of the US Copyright Office on authorship (IPKat here) to the high-profile decision of the UK Supreme Court ([2023] UKSC 49, covered by the IPKat here and here) which held that an "inventor" within the meaning of the Patents Act 1977 must be a natural person, and that Dr Thaler could not claim ownership of the patent on the basis of his ownership of the DABUS machine.
The patent applications considered by the Supreme Court concerned a new kind of food or beverage container, and another concerned a new kind of light beacon and a new way of attracting attention in an emergency. In both applications, Dr Thaler declared that DABUS - not he - was the inventor, with the accompanying statement in Form 7 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 European patent applications were filed under the Patent Cooperation Treaty (PCT). Those who have followed these cases closely will recall that the resulting International Patent Application was then transmitted to Australia and South Africa. There was a lot of excitement in the press when the patent application entered the national phase and then was granted in South Africa, but since South Africa does not examine the claims about inventorship in PCT applications, the significance of the grant was certainly overblown. Likewise, there was a lot of attention to a decision from a single judge of the Federal Court of Australia holding that an AI machine could be an inventor, but this was soon overturned by the Full Federal Court.
In the background to all of these proceedings, Dr Thaler had filed a division application in 2022, with a statement that "the applicant identifies no person or persons whom he believes to be an inventor," which received objections from the examiner. Two days after the UK Supreme Court judgment, Dr Thaler filed a further Form 7 in respect of the divisional application, which named Dr Thaler as the inventor (but still acknowledged that DABUS conceived the invention).
The examiner objected again, then the matter went to a hearing before Mr Andrew Bushell, a Hearing Officer in the UKIPO. Amidst other issues with the divisional application, Mr Bushell noted that:
"We have clear evidence on file that Dr Thaler has never believed he is the inventor of this application, therefore I cannot accept this latest change of mind."
Thaler appealed.
The High Court decision
A key issue was whether the final Form 7 statement failed to meet the requirements of s 13(2) of the Patents Act, since the earlier forms were clear that Dr Thaler did not believe any person was the inventor.
While the UKIPO would not normally investigate the correctness of genuine and plausible statements of inventorship and entitlement, this "does not mean to say that the UKIPO is powerless to act where that indication is obviously defective or insufficient." As such, the High Court held that there is no reason why, in principle, a statement that the applicant believes a natural person or persons to be the inventor(s) cannot be "obviously defective".
Dr Thaler's explanation was that his beliefs had not changed, but the law had changed after the Supreme Court decision. However, this seemed to change nothing of Dr Thaler's beliefs about who was the "actual deviser" of the invention. While it was possible for his beliefs to have changed, his updated Form 7 in 2023 reiterated that he was not the actual deviser of the invention - all he did was train the AI, and DABUS was said to have conceived of the inventions autonomously and independently. Therefore, his statement of inventorship was "obviously defective"
The decision is perhaps unsurprising and therefore unexciting from the perspective of the AI inventorship debate, but it has some good meat on the bone regarding the other points of appeal, which concern patent procedure and the status of divisional applications. The High Court decision affirms that patent applicants can't use techniques like a request for a hearing to delay compliance with the Act and Regulations and, in effect, weaponise the administrative load of the UKIPO to extend procedural deadlines. These deadlines apply to all applicants, and:
"There is no reason to think that Parliament intended applicants to be able to delay the effects of their non-compliance until a final decision had been made confirming that they had not complied."
Final Thoughts
The High Court noted with sympathy that Dr Thaler seems to have been the victim of his own honesty. While others are certainly filing patent applications with a natural person as the named inventor, even though the invention was actually created by AI, their applications would not face any of the scrutiny experienced by Thaler. However, unless the UKIPO or Parliament see fit to introduce a provision requiring an AI-generated invention to be identified as such, there was no basis for the High Court to intervene.
Of course, Dr Thaler and his acolytes have been on a mission for court decisions about AI and IP, so this is not a total loss. But even if they don't appreciate the insights on the procedural requirements to file and maintain a divisional patent application, there are surely some IPKat readers who will!
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https://ipkitten.blogspot.com/2025/09/no-take-backs-for-thaler-on-ai.html