Bombay High Court Declares IIT Bombay Researcher Sole Owner of Invention After Worldwide Assignment; Quashes Patent Rejection and Orders Fresh Decision Within Eight Weeks
IIT Bombay’s Worldwide Assignment Gave Researcher Complete Ownership Including India: Bombay High Court Quashes Patent Rejection After 13-Year Delay
Facts
Dr. Tarkeshwar Chandrakant Patil was associated with IIT Bombay, initially as a Research Assistant from June 2008 and thereafter as a Ph.D. student. His doctoral research led to an invention titled “An Apparatus and a Method for In-Vivo Power Generation”, concerning generation of power to keep devices implanted in the human body active. IIT Bombay filed Patent Application No. 2808/MUM/2013 on 28 August 2013, naming Patil as the prime inventor.
Although Patil disputed IITB’s ownership, the Court found that he had expressly accepted IITB’s 2012 Intellectual Property Policy through a Revenue Sharing Agreement executed in December 2013. Consequently, the intellectual property initially vested in IITB.
However, disputes subsequently arose between Patil and his Ph.D. guide, Prof. Siddhartha Duttagupta, particularly over prosecution of the corresponding US patent application. Eventually, IITB’s Dean, Research & Development—the authority empowered under IITB’s IP Policy to grant waivers—executed a Deed of Assignment dated 3 July 2017 in Patil’s favour.
The Deed transferred IITB’s full and exclusive right, title and interest in the invention for the United States and all foreign countries and authorised Patil to pursue patent applications worldwide. The Court held that this necessarily encompassed India and rejected IITB’s contention that the assignment was somehow confined to the United States.
Patil subsequently obtained two patents in the United States exclusively in his name.
In India, however, the Patent Controller’s records repeatedly changed the applicant between Patil and IITB. Patil’s Form 6 substituting himself as applicant was initially accepted in November 2017 and formally confirmed in December 2017, but the decision was shortly thereafter withdrawn. The Controller’s records again showed Patil as applicant in September and October 2018 before reverting to IITB without any reasoned order.
Ultimately, by order dated 17 July 2025, the Deputy Controller rejected Patil’s pre-grant opposition and also refused IITB’s Patent Application under Section 15 because IITB had failed to establish proof of right under Section 7(2). Remarkably, neither Patil’s nor IITB’s submissions on the substantive patentability of the invention were adjudicated.
Patil therefore approached the Bombay High Court by way of a statutory appeal under Section 117A of the Patents Act, 1970.
Issues
The High Court framed two central questions:
- Whether Patil possessed rights over the intellectual property covered by the Patent Application worldwide, including India; and
- Whether the manner in which the Patent Controller conducted the proceedings required intervention in the High Court’s appellate jurisdiction under Section 117A.
This involved subsidiary questions concerning the applicability of IITB’s IP Policy, the legal effect and geographical scope of the 2017 Deed of Assignment, CSIR’s possible claim over the invention, Patil’s pre-grant opposition under Section 25(1)(a), and the Controller’s prolonged handling of the application.
Petitioner’s Arguments
Patil’s central case was that IITB had completely divested itself of the intellectual property through the Deed of Assignment dated 3 July 2017.
He maintained that the instrument was expressly a worldwide assignment and could not rationally be interpreted as transferring rights everywhere except India.
Patil also contended that he had never signed the specific IP Policy Agreement Form prescribed by IITB and therefore initially disputed the applicability of IITB’s IP Policy to him. The Court ultimately rejected this particular contention because Patil had expressly accepted IITB’s ownership regime through the subsequent Revenue Sharing Agreement.
Nevertheless, Patil argued successfully that even assuming IITB initially owned the invention under its IP Policy, IITB subsequently transferred that ownership entirely to him.
He therefore sought recognition as the rightful applicant and inventor, setting aside of the Controller’s refusal order, and consideration of the Patent Application on its substantive merits.
IIT Bombay’s Arguments
IITB and Prof. Duttagupta principally relied upon IITB’s 2012 IP Policy, under which intellectual property generated by students, faculty, staff and researchers ordinarily belonged to IITB.
They argued that the 2017 Deed of Assignment should not be construed as transferring IITB’s Indian rights to Patil and sought to confine its operation essentially to the US patent rights.
They also referred to the CSIR undertaking executed by Patil and raised questions regarding IITB resources used in generating the invention.
The High Court rejected these attempts to preserve IITB’s ownership after the assignment, holding that once IITB’s duly authorised Dean, R&D had executed the unconditional worldwide assignment, the institution could not resile from that binding transaction.
Analysis of the Law
1. IITB initially owned the invention
The Court did not accept Patil’s argument that IITB’s IP Policy was altogether inapplicable merely because he had not signed its prescribed standard form.
The Court found that Patil, Duttagupta and Pushpagandha had accepted the IP Policy through the Revenue Sharing Agreement and related assignment. Consequently, rights in the invention initially vested in IITB.
This aspect is important: the Court did not hold that an IIT researcher automatically owns an invention created during research.
2. IITB subsequently transferred its ownership to Patil
The decisive event was the 3 July 2017 Deed of Assignment.
The Dean, R&D was the competent authority under IITB’s own IP Policy to grant waivers. Acting pursuant to that institutional authority, the Dean assigned IITB’s full and exclusive right, title and interest to Patil.
The Court held that the assignment extended to India and operated prospectively from 3 July 2017. From that date, Patil became the sole owner of the invention and the Patent Application.
3. “Worldwide” assignment included India
The Court emphatically rejected the argument that an assignment covering the United States and countries foreign thereto somehow excluded India.
The document authorised Patil to file patent applications in any country. Its commercial and legal purpose was to transfer IITB’s rights so that Patil could independently pursue patent protection.
Thus, IITB could not accept the assignment’s operation for the United States while simultaneously assert ownership over the same invention in India.
4. CSIR had no subsisting claim
Although Patil had executed an undertaking with CSIR, the Court found that CSIR had subsequently declined to assert rights over the patent prosecution. Under CSIR’s own policy, rights could vest in the host institution and be governed by that institution’s IP framework.
Accordingly, the CSIR undertaking did not defeat Patil’s title derived through IITB’s subsequent assignment.
Precedent Analysis
A notable precedent discussed was Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd.
The Patent Controller had relied upon it while invoking what was described as a “duty to invent” doctrine.
The High Court clarified that the decision was not a Supreme Court judgment but arose from decisions of a Single Judge and Division Bench of the Bombay High Court. More importantly, it dealt with a materially different situation involving whether a managing director owed a fiduciary duty to register patents in the company’s name.
The Court held that it had no bearing on the present dispute, because IITB—the institution claiming ownership—had itself subsequently executed a written instrument assigning the title to Patil after considering the underlying dispute.
Thus, whatever IITB’s original entitlement as employer/institution might have been, the subsequent binding assignment was decisive.
Court’s Reasoning
The High Court held that the documentary record conclusively demonstrated that IITB had no residual right, title or interest after execution of the Deed of Assignment.
Exercising appellate powers under Section 117A—which the Court described as concurrent and co-extensive with those of the Controller—the Court held that Patil had to be treated as the owner and applicant.
The Court was particularly critical of the Patent Controller’s conduct.
After nearly thirteen years, the Controller had arrived at a contradictory outcome: IITB could not obtain the patent because it lacked proof of right from Patil, while Patil could not be treated as owner because the Controller regarded the invention as belonging to IITB.
Consequently, neither party’s substantive case on patentability was adjudicated.
The Court also noted the serious practical consequence: Patil’s invention had secured patent protection in the United States while remaining unprotected in India because of the prolonged institutional dispute and patent proceedings.
Conclusion
The Bombay High Court allowed Patil’s challenge and conclusively held that:
- IITB’s IP Policy originally governed the invention and initially vested the rights in IITB;
- the Dean, R&D was competent to waive IITB’s rights;
- the 3 July 2017 worldwide Deed of Assignment validly transferred IITB’s complete rights to Patil, including Indian rights;
- Patil became the sole owner from the date of assignment;
- CSIR had no subsisting claim;
- Patil’s pre-grant opposition under Section 25(1)(a) was allowed and he was recognised as inventor and applicant;
- IITB’s continued pursuit of the Patent Application in its own name after 3 July 2017 was wrongful; and
- the Controller’s order dated 17 July 2025 was quashed in its entirety.
The Patent Application was restored with Patil substituted as applicant in place of IITB. His Forms 6 and 13 were allowed, and the Controller was directed to decide the Patent Application on its merits under Sections 14 and 15 within eight weeks.
Significantly, the Court directed the Controller General to entrust the matter to a senior officer who had not previously dealt with the Patent Application, who must decide it uninfluenced by the earlier orders and analysis. The Court expressly clarified that it had not expressed any opinion on whether the invention itself deserves grant of a patent.
Case Details
Case: Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors.
Court: Bombay High Court, Ordinary Original Civil Jurisdiction, Commercial Division
Case Number: Commercial Miscellaneous Petition (L) No. 12000 of 2026
Neutral Citation: 2026:BHC-OS:19905
Judge: Justice Somasekhar Sundaresan
Reserved On: 11 August 2026
Pronounced On: 8 September 2026
Result: Petition allowed; Patil recognised as sole owner, inventor and applicant; Controller’s rejection quashed; Patent Application restored for fresh merits determination within eight weeks by a different senior officer.
