Court directs Patent Controller to restore patent application to Dr. Tarkeshwar Patil as sole applicant, emphasizing validity of IIT Bombay’s deed of assignment and ordering expeditious processing.
In a landmark judgment delivered on September 8, 2026, the Bombay High Court ruled in favor of Dr. Tarkeshwar Chandrakant Patil, affirming his exclusive ownership of a patent titled “An Apparatus and a Method for In-Vivo Power Generation,” and quashing the Indian Institute of Technology Bombay’s (IITB) attempts to claim rights over the invention. The court directed the Controller of Patents to restore the patent application, filed originally by IITB, in Patil’s name and mandated its expeditious processing within eight weeks.
The dispute centered on the ownership of a patent application filed in India in 2013, arising from research conducted by Dr. Patil during his association with IITB. Although IITB was the applicant on record and Patil was named as the inventor, conflicts emerged between Patil and his Ph.D. guide, Prof. Siddhartha Prakash Duttagupta. The institutional conflict resulted in IITB’s Dean of Research and Development executing a deed of assignment in 2017, transferring all intellectual property rights worldwide—including India—to Dr. Patil.
Despite this deed of assignment, the Controller of Patents repeatedly recognized IITB as the applicant, dismissing Patil’s claims and refusing to process the patent application in his favor. The Controller’s order dated July 17, 2025, rejected Patil’s pre-grant opposition under Section 25(1)(a) of the Patents Act, 1970, on the ground that IITB had not proven its entitlement to prosecute the patent, and that Patil, as an employee, had no claim to ownership.
The High Court’s judgment, authored by Justice Somasekhar Sundaresan, found the Controller’s reasoning legally unsound and procedurally deficient. The court emphasized that:
- The 2012 Intellectual Property (IP) Policy of IITB, which initially vested ownership of inventions in the institution, was lawfully waived by the Dean, R&D through the deed of assignment to Patil.
- The deed of assignment was a valid, institutional resolution of conflict that assigned all rights, titles, and interests in the invention to Patil worldwide, including India.
- The Controller’s failure to acknowledge the deed and its inconsistent handling of the patent application over thirteen years amounted to an abuse of process and denial of due process.
- The CSIR, which funded part of Patil’s research, had no subsisting claim over the intellectual property.
The court quashed the Controller’s impugned order and directed the restoration of the patent application in Patil’s name, instructing the Controller to process the application on merits under Sections 14 and 15 of the Patents Act within eight weeks. To ensure impartiality, the Controller General was requested to assign the matter to a senior officer not previously involved.
The judgment also acknowledged the prolonged and frustrating ordeal faced by Dr. Patil, who secured two patents in the United States but was denied protection in India due to institutional conflict and administrative delays. The court commended the legal aid counsel supporting Patil and called on IITB to cooperate with the implementation of the judgment.
This decision underscores the importance of respecting institutional assignments of intellectual property rights and ensuring adherence to procedural fairness in patent proceedings. It also clarifies that institutional IP policies may be waived by authorized officers, and that employee inventors can hold exclusive ownership when such waivers and assignments are validly executed.
Bottom Line:
Patent Law - Assignment of intellectual property rights by an institution to an inventor - Institution's waiver of claims through a deed of assignment must be respected - Inventor's exclusive ownership of invention upheld.
Statutory provision(s):
Patents Act, 1970 Sections 7(2), 14, 15, 25(1)(a), 26, 77, 117A; Patents Rules, 2003 Rule 24B, Rule 55(5)
