Summary
Dr. Tarkeshwar Chandrakant Patil, a scientist formerly associated with the Indian Institute of Technology, Bombay (“IITB”), spent thirteen years fighting to be recognised as the rightful applicant on his own patent application for an implantable power-generation device. Although IITB had executed a Deed of Assignment handing him worldwide rights to the invention, the Controller of Patents kept treating IITB as the applicant and eventually rejected the application altogether. The Bombay High Court, hearing a statutory appeal under Section 117A of the Patents Act, held that IITB's continued pursuit of the application after assigning away its rights amounted to wrongful obtainment under Section 25(1)(a), and restored Patil as the applicant. The ruling matters because it clarifies that an institution's own assignment can override generic employer ownership claims under an IP policy, and that a signed waiver, once executed by a competent authority, cannot be resiled from through administrative inertia.
Background
Thirteen years, four unexplained reversals in the Patent Office’s own online records, and two separate Division Bench interventions were needed before a scientist could get a hearing on who actually owned his own invention. The Bombay High Court eventually called the episode “tragicomic,” a rare rebuke arising out of a wrongful obtainment claim under the Patents Act, 1970 (“Patents Act”).
Dr. Tarkeshwar Chandrakant Patil (“Patil”) joined the Indian Institute of Technology, Bombay (“IITB”) in 2008, first as a research assistant and later as a Ph.D. student, working on an invention titled “An Apparatus and a Method for In-Vivo Power Generation,” designed to keep implanted medical devices powered. IITB filed the underlying patent application in India in August 2013 naming Patil as the prime inventor, and a corresponding application in the United States in 2014, which eventually matured into two patents granted exclusively to Patil. Disputes broke out between Patil and his Ph.D. guide, Prof. Siddhartha Prakash Duttagupta (“Duttagupta”), over how the invention was being pursued, and IITB’s Dean of Research and Development executed a worldwide Deed of Assignment in Patil’s favour in July 2017 to resolve the conflict. Despite this, the Controller of Patents kept reversing Patil’s status as applicant without explanation, and a Deputy Controller eventually rejected the Indian application in July 2025 without recognising either party’s ownership claim. Patil appealed to the Bombay High Court under Section 117A of the Patents Act.
Issues Before the Court
-
- Whether the Deed of Assignment dated July 3, 2017 extinguished IITB’s rights in the invention despite IITB’s IP Policy vesting ownership in the institution.
- Whether IITB’s continued pursuit of the Patent Application after executing the Deed of Assignment amounted to wrongful obtainment under Section 25(1)(a) of the Patents Act.
- Whether the Controller’s repeated, unexplained reversals of the named applicant and the thirteen-year delay in adjudication vitiated the proceedings.
- Whether the Patent Application ought to be examined on merits under Sections 14 and 15 of the Patents Act independently of the ownership dispute.
Dr. Patil’s Arguments
-
- Contended that he was never asked to sign IITB’s formal IP Policy Agreement Form and so could not be bound by the 2012 IP Policy.
- Relied on the Deed of Assignment dated July 3, 2017, arguing it transferred worldwide rights, including in India, to him.
- Argued that IITB’s continued pursuit of the Patent Application after the assignment constituted wrongful obtainment under Section 25(1)(a) of the Patents Act.
- Pointed to the Controller’s unexplained reversals of the applicant’s name in the online record as evidence of arbitrary handling of the proceedings.
IITB and Duttagupta’s Arguments
-
- Argued that the Deed of Assignment, though titled a worldwide assignment, was executed only in the context of the United States application and did not extend to India.
- Relied on Clause I of Part B of IITB’s IP Policy, contending that intellectual property produced by IITB personnel vests in the institution regardless of the later assignment.
- Invoked an undertaking dated March 21, 2013 executed with the Council of Scientific and Industrial Research, suggesting it retained an interest in the invention.
- Relied on Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd. to argue that an employee engaged to invent has no independent claim to ownership of the resulting patent.
Court’s Analysis
The Deed of Assignment Overrides the IP Policy
The court noted that although IITB’s 2012 IP Policy vested ownership of inventions in the institution and bound “IITB Personnel” including students and research staff, the policy itself designated the Dean, Research and Development as the authority competent to waive its application. The court observed that Patil’s execution of a Revenue Sharing Agreement in December 2013 confirmed he had accepted the IP Policy, so ownership initially vested in IITB. The court held, however, that the Deed of Assignment executed by the Dean, R&D in July 2017 was a complete and unconditional waiver of that ownership, transferring worldwide rights, including in India, to Patil. The court further observed that treating the assignment as confined to the United States would produce an absurd result, with Patil owning the invention abroad while IITB retained it at home, even though only two jurisdictions, India and the United States, were ever in play.
Reading Wrongful Obtainment Under Section 25(1)(a)
The court opined that once IITB executed the Deed of Assignment, its continued pursuit of the Patent Application in its own name became a case of wrongful obtainment within the meaning of Section 25(1)(a) of the Patents Act. The court found that the Controller had erroneously imported a “duty to invent” doctrine from Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd. (2014 SCC OnLine Bom 1851; 2015 SCC OnLine Bom 4813), a company-law derivative-action ruling that had no bearing on a case where the employer itself had assigned title to the inventor. The court reasoned that wrongful obtainment under the Patents Act is not confined to applications filed behind an inventor’s back, and that pursuing an application in defiance of one’s own executed assignment falls squarely within the provision.
Institutional Delay and Administrative Reversals
The court stated that the Controller’s office had, without explanation, changed the named applicant between IITB and Patil on at least four occasions between 2017 and 2018, and had taken thirteen years, more than half the patent’s twenty-year term, to issue a final order. The court noted that two separate Division Benches of the High Court had already directed the Controller to hear Patil before this appeal reached final hearing, yet the Impugned Order still failed to engage with the Deed of Assignment on its merits. The court held that this pattern reflected an absence of due process rather than a considered adjudication of a genuine ownership dispute.
Findings
In view of the observations and the arguments presented by both the parties, the Bombay High Court held that:
-
- The Deed of Assignment dated July 3, 2017 validly transferred worldwide rights in the invention, including in India, from IITB to Patil, rejecting IITB’s contention that the assignment was confined to the United States.
- IITB’s continued pursuit of the Patent Application after executing the Deed of Assignment amounted to wrongful obtainment under Section 25(1)(a) of the Patents Act, and Patil’s Pre-Grant Opposition was allowed.
- The Impugned Order dated July 17, 2025 was quashed and set aside in its entirety.
- The Patent Application was restored to the Controller’s file with Patil substituted as the applicant, to be decided on merits under Sections 14 and 15 of the Patents Act within eight weeks.
- The Controller General was directed to assign the matter to a senior officer uninvolved in the earlier proceedings, who would proceed uninfluenced by the Impugned Order and prior correspondence.
- IITB, having divested all its rights, was held not required to be heard in the further proceedings, but was directed to extend cooperation and execute any documents the Controller may require.
Case Citation: Dr. Tarkeshwar Chandrakant Patil vs. Indian Institute of Technology, Bombay & Ors., Commercial Miscellaneous Petition (L) No. 12000 of 2026, High Court of Judicature at Bombay (Commercial Division), decided on September 8, 2026. Available at https://indiankanoon.org/doc/136075531/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels