13-year patent stalemate involving IIT Bombay: Bombay High Court recognises scientist as owner after worldwide assignment and orders fresh processing

The petitioner, Dr. Tarkeshwar Chandrakant Patil, was the original inventor named in Patent Application No. 2808/MUM/2013, filed on 28 August 2013 by IIT Bombay for an “Apparatus and a Method for In-Vivo Power Generation”.

Patil had been an employee of IIT Bombay and subsequently a Ph.D. student; the invention arose from research forming part of his doctoral work.

IIT Bombay’s 2012 Intellectual Property Policy ordinarily vested intellectual-property rights generated by IIT Bombay personnel in the Institute.

Patil and the other named inventors also executed a Revenue Sharing Agreement acknowledging IIT Bombay’s ownership under the IP Policy.

Following disputes between Patil and his Ph.D. guide, IIT Bombay’s Dean, Research and Development executed a Deed of Assignment dated 3 July 2017, assigning to Patil the full and exclusive right, title and interest in the invention for the United States and all foreign countries, and authorising him to file patent applications in any country.

Patil filed a pre-grant opposition under Section 25(1)(a) of the Patents Act, 1970, contending that IIT Bombay had wrongfully pursued the application despite assigning all rights to him.

The Controller ultimately rejected the patent application by order dated 17 July 2025, holding that IIT Bombay had not established its title under Section 7(2), while also declining to recognise Patil as applicant and refusing to consider the merits of the patent application or the parties’ substantive submissions.

Whether the 3 July 2017 Deed of Assignment transferred IIT Bombay’s entire right, title and interest in the invention and the patent application to Patil, including rights in India?

Whether Patil was entitled to be recognised as the inventor and applicant under Section 25(1)(a) of the Patents Act on the ground that IIT Bombay had wrongfully continued to pursue the patent application after assigning the rights to him?

Whether the Controller’s order was legally sustainable when it rejected the application for want of proof of IIT Bombay’s title, while refusing to recognise Patil as applicant and without considering the merits of the patent application?

Whether the High Court, exercising appellate jurisdiction under Section 117A, could restore the application, substitute Patil as applicant, and issue directions for its consideration on merits?

The Court applied Section 117A of the Patents Act, 1970, under which the High Court exercises appellate jurisdiction over specified orders of the Controller, with powers concurrent and co-extensive with those of the Controller.

Section 7(2) requires an applicant who is not the true and first inventor to establish the right to apply for a patent.

Section 25(1)(a) permits a pre-grant opposition where the applicant or the person through whom the applicant claims has wrongfully obtained the invention from the opponent or a person under whom the opponent claims.

Sections 14 and 15 require the Controller to communicate objections, hear the applicant where required, and determine whether the application complies with the Act and Rules.

Rule 55(5) permits simultaneous determination of the patent application and the pre-grant opposition.

Section 77 confers civil-court-like powers on the Controller, requiring a reasoned and procedurally fair adjudication.

The Court also applied IIT Bombay’s 2012 IP Policy, which vested ownership in IIT Bombay but authorised the Dean, R&D to grant waivers.

It distinguished Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd., holding that the precedent concerned a different fiduciary-duty issue and did not govern a case involving an express subsequent assignment of patent rights.

The Court held that Patil was initially bound by IIT Bombay’s IP Policy because he had expressly accepted it through the Revenue Sharing Agreement, and that the invention consequently vested in IIT Bombay at the outset.

However, the Dean, R&D was the authority empowered by the same Policy to waive its application, and the 3 July 2017 Deed of Assignment constituted an authorised, unconditional and worldwide transfer of IIT Bombay’s rights to Patil.

The wording of the deed expressly covered the United States, all foreign countries, all applications relating to the invention, and authorisation to file applications anywhere; there was therefore no basis to exclude India.

The Court further held that the assignment operated prospectively from its execution and did not involve impermissible retrospectivity.

IIT Bombay’s continued prosecution of the application in its own name after 3 July 2017 was therefore wrongful within Section 25(1)(a), notwithstanding that Patil had known of the original filing.

The Controller erred by treating “wrongful obtainment” as confined to applications filed secretly or without the inventor’s knowledge and by ignoring the legal effect of the assignment.

The Controller also adopted an internally contradictory position: it denied IIT Bombay’s title for want of Patil’s assignment while simultaneously refusing to recognise Patil as the assignee and applicant.

Its repeated unexplained alterations of the applicant’s name, failure to consider Patil’s submissions, and refusal to determine the application’s merits violated the requirements of reasoned adjudication and natural justice.

Since Patil succeeded under Section 25(1)(a), he had to be heard as applicant on the objections under Sections 14 and 15; the Controller could not dispose of the matter without considering the rightful applicant’s merits submissions.

It declared that Patil was the sole owner of the invention and the patent application, and that the 3 July 2017 Deed of Assignment extended worldwide, including to India.

Patil’s pre-grant opposition under Section 25(1)(a) was allowed, and he was directed to be recognised as the inventor and applicant.

The Controller’s order dated 17 July 2025 was quashed and set aside.

The patent application was restored, Patil’s Forms 6 and 13 were allowed, and the Controller was directed to process the application on its merits under Sections 14 and 15 and pass a reasoned order within eight weeks.

The matter was to be assigned to a senior officer unconnected with the earlier proceedings, who was directed to proceed uninfluenced by the impugned order and earlier administrative decisions.

IIT Bombay was not required to be heard further as it had divested itself of all rights, but was directed to cooperate and execute necessary documents.

The Court expressly clarified that it had not expressed any opinion on the substantive merits or ultimate grantability of the patent.