IIT-Bombay Must Recognize Scientist's Ownership Of Assigned Invention: Bombay HC

The Bombay High Court has quashed a patent rejection involving Indian Institute of Technology (IIT) Bombay, ruling that a formal 'Deed of Assignment' executed by an institutional authority overrides standard employment policies regarding intellectual property ownership. The Court rebuked the Controller of Patents for miring a breakthrough biomedical invention in a 'tragicomic' thirteen-year stalemate, effectively restoring the inventor's right to pursue protection for technology already patented in the United States.

Justice Somasekhar Sundaresan, presiding over the Commercial Division, adjudicated this statutory appeal under Section 117A of the Patents Act, 1970. The case involved a protracted dispute between Dr. Tarkeshwar Chandrakant Patil and the Indian Institute of Technology, Bombay (IITB), concerning an apparatus for in-vivo power generation. Despite the Petitioner being the original inventor and IITB having formally assigned all worldwide rights to him in 2017, the Patent Office had repeatedly refused to recognize the Petitioner as the rightful applicant.

Key Takeaways

Institutional Waivers are Binding

Express assignments executed by designated institutional authorities (like a Dean of R&D) supersede general IP policies that otherwise vest ownership in the employer.

Due Process in Patent Filings

Quasi-judicial authorities like the Controller of Patents cannot unilaterally 'reverse' applicant names on digital portals without reasoned orders or explanation.

Territorial Scope of Assignments

Phrases like 'all countries foreign thereto' in an assignment deed relating to a US application naturally include India if the intent is a worldwide transfer of rights.

Protection of Inventor Rights

A scientist cannot be deprived of statutory patent protection due to administrative squabbles or the 'seller's remorse' of an institution that previously divested its interest.

Court Rebukes Controller's 'Premeditated' Conduct

The Bombay High Court expressed significant concern over the Controller’s handling of the matter, noting that the Impugned Order merely reiterated views held seven years prior without accounting for the intervening Deed of Assignment. The Bench observed that while the Controller stayed away from the appeal, the records showed a 'stalemate' where the office refused to process the assignment because IITB hadn't proven its initial right, yet simultaneously refused IITB's application because the inventor (Patil) wouldn't endorse it.

The Court issued the following directions:

"A] The IP Policy of 2012 applied to the invention. By executing the Revenue Sharing Agreement on December 11, 2013 and the assignment dated May 19, 2014, Patil, Duttagupta and Pushpagandha accepted the IP Policy and vested their rights in the invention in IITB... B] By the Deed of Assignment dated July 3, 2017, executed by the Dean, R&D... IITB sold, assigned and transferred to Patil the full and exclusive right, title and interest in the invention... The contention that the Deed of Assignment does not extend to India is rejected... D] The Pre-Grant Opposition filed by Patil under Section 25(1)(a) of the Act is allowed by declaring that Patil be recognised as the inventor and applicant... E] IITB’s continued pursuit of the Patent Application in its own name after July 3, 2017 was wrongful. The Impugned Order dated July 17, 2025 is quashed and set aside in its entirety; F] The Patent Application is restored to the file of the Controller with Patil substituted as the applicant in place of IITB; Patil’s Form 6 and Form 13 dated October 31, 2017 stand allowed. The Controller shall process the Patent Application on merits under Sections 14 and 15 of the Act... G] The Controller General is requested to assign the Patent Application to a senior officer other than the officer who passed the Impugned Order..."

Ratio

When an employer institution, acting through its designated competent authority, executes a formal and unconditional Deed of Assignment transferring all right, title, and interest in an invention to the inventor, such a contract constitutes a valid waiver of the institution's internal Intellectual Property Policy. The Controller of Patents cannot ignore such an assignment by relying on generic employer-employee relationship principles to deny the assignee's status as the rightful applicant under the Patents Act, 1970.

Background

The dispute arose from research conducted by Dr. Patil during his tenure at IITB as a Research Assistant and Ph.D. student. While the 2012 IP Policy of IITB generally vests ownership of employee/student inventions in the Institute, a bitter conflict between Dr. Patil and his guide led the Dean (R&D) to execute a 'Deed of Assignment - Worldwide' in July 2017. This deed transferred all rights to Dr. Patil, who subsequently secured two patents in the USA.

However, in India, the Patent Office mired the application in procedural knots for thirteen years. The Controller issued an order in 2025 rejecting the application under Section 15 of the Patents Act, 1970 on the ground that proof of right from the inventor was missing, while simultaneously dismissing Patil's pre-grant opposition under Section 25(1)(a). The Bombay High Court found this approach 'fallacious,' noting that the Deed of Assignment was a prospective reversal of ownership that the Controller was bound to recognize. The Bench set aside the rejection and ordered a time-bound merit review of the patent claims.

Case Details:
Case No.: COMMERCIAL MISCELLANEOUS PETITION (L) NO. 12000 OF 2026
Case Title: Dr. Tarkeshwar Chandrakant Patil Versus Indian Institute of Technology, Bombay & Ors.
Appearances:
For the Petitioner(s): Mr. Hiren Kamod (Legal Aid Counsel), Adv. Anees Patel, Adv. Ravindra Chile, Adv. Prashant Nakati.
For the Respondent(s): Ms. Kajal Gupta, Dheer Sampat, Shweta Singh i/b M. V. Kini & Co. for R-1 & 3.

Source: 2026 CaseBase(BOM) 5643