Decision Nº O/741/19 from Intellectual Property Office - (Patent decisions), 4 December 2019
| Judge | Mr H Jones |
| Court | Intellectual Property Office (United Kingdom) |
| Date | 04 December 2019 |
| Patent Number | GB1816909.4, GB1818161.0 |
| Administrative Decision Number | O/741/19 |
| Parties | Stephen L Thaler |
PATENTS ACT 1977
BL O/741/19
04 December 2019
(THE PATENTS RULES 2007)
APPLICANT
Stephen L Thaler
ISSUE
Whether the requirements of section 7 and
13 concerning the naming of inventor and
the right to apply for a patent have been
satisfied in respect of GB1816909.4 and
GB1818161.0
HEARING OFFICER
H Jones
DECISION
Background
1 United Kingdom patent applications GB1816909.4 and GB1818161.0 were filed in
the name of Stephen Thaler (“the applicant”) on 17 October 2018 and 7 November
2018 respectively. As is often the case, the Request for Grant forms (Patent Form 1)
accompanying the applications stated that the applicant was not an inventor of the
inventions - this often occurs in respect of inventions made by employees of a
company.
2 By way of Office letters dated 19 November 2018 and 27 Novem ber 2018
respectively, the applicant was notified that he would need to file a statement of
inventorship and of right to grant of a patent (Patent Form 7) within 16 months of the
filing date, in accordance with section 13(2) and rule 10(3).
3 The applicant filed statements of inventorship on separate Form 7s for both
applications on 23 July 2019. The Form 7s and accompanying letter stated that the
inventor is an artificial intelligence (AI) m achine called “DABUS” and that the
applicant acquired the right to grant of the patents in question by “ownership of the
creativity machine DABUS”.
4 The Office wrote to the applicant on 8 August 2019 saying that the naming of a
machine as inventor does not meet the requirements of the Act and that a person
must be identified. The Office also asked the applicant to provide a statement
indicating how he derived the right to grant of the patent from the inventor and
explained that failure to provide the necessary information within the prescribed
period would result in the applications being taken to be withdrawn.
5 In a letter dated 28 August 2019, the applicant’s attorney, Mr Robert Jehan of
Williams Powell, maintained that the statem ent of inventorship fully meets the
requirements of the Act and Rules and requested a hearing on the matter. A hearing
was scheduled for 14 November 2019 and it was agreed that the two applications
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