"Tragicomic": Bombay High Court Slams Patent Office's 13-Year Mishandling, Restores Scientist As Rightful Applicant Over IIT Bombay

The Court held that IITB's own Deed of Assignment dated July 3, 2017, executed by the Dean, Research and Development, had unconditionally transferred worldwide rights in the invention to Patil, rejecting IITB's contention that the assignment excluded India despite covering the United States and "all countries foreign thereto", and ruled that the Controller's continued disregard of this instrument rendered IITB's pursuit of the patent application wrongful.

A Single Judge Bench of Justice Somasekhar Sundaresan observed, “The matter in hand borders on the tragicomic. The Impugned Order is an all-round rejection of everything before the Controller. Effectively, Patil’s submissions on merits of his ownership of the invention have been rejected, while refusing to consider his submissions on the merits of Patent Application. IITB’s submissions on merits have also been rejected without even dealing with them, on the premise that IITB has not demonstrated that it is entitled to pursue the Patent Application in its name because Patil has not authorised IITB to be the applicant”.

Hiren Kamod, Legal Aid Counsel appeared for the petitioner and Advocate Kajal Gupta appeared for respondent.

Patil, while pursuing his Ph.D. at IITB under the guidance of Prof. Siddhartha Prakash Duttagupta, developed an invention titled "An Apparatus and a Method for In-Vivo Power Generation," for which a patent application was filed by IITB in India in August 2013 and in the United States in May 2014.

Disputes arose between Patil and Duttagupta over the prosecution of the US application, culminating in IITB's Dean, R&D executing a Deed of Assignment in July 2017, transferring all worldwide rights in the invention to Patil. Patents were subsequently granted to Patil exclusively in the United States in 2018 and 2020.

The Indian application, however, remained mired in the Patent Office for over a decade, with the Controller repeatedly altering the applicant's name on record without explanation, before finally rejecting the application in July 2025 on the ground that neither IITB's title nor Patil's substitution could be established.

Patil approached the Bombay High Court on multiple occasions during the pendency of the application, securing two separate Division Bench orders in 2024 and 2025 directing the Controller to hear him on his Pre-Grant Opposition. Despite these directions, the Controller's final order in July 2025 rejected the application without engaging with the merits of either party's submissions, prompting the present statutory appeal under Section 117A of the Patents Act, 1970.

The Court held that the Revenue Sharing Agreement executed by Patil in 2013 bound him to IITB's Intellectual Property Policy, under which ownership initially vested in IITB, but that the subsequent Deed of Assignment, executed by the institutionally designated authority after internal dispute-resolution mechanisms had been invoked, validly and prospectively transferred all such rights to Patil, including in India.

“…Worse, the contention is that countries foreign to USA cannot include India and would only cover all countries other than India that are foreign to USA. This is wholly absurd and inflicts serious violence not just to the language of a legally binding instrument but also to plain logic and reason. The absurdity of the proposition is that IITB would need to justify a stance that the invention can be fully and freely exploited in USA by Patil but, in India, the patent protection must be available to IITB and not to Patil”, the Bench said.

“The Impugned Order invokes IITB’s IP Policy but simply does not deal with how the Deed of Assignment is consistent with the IP Policy resulting in a waiver granted by the designated Competent Authority of IITB, namely, the Dean, R&D. One cannot help but get an impression that the Controller has thrown the kitchen sink at Patil hoping that something would stick and thereby seeking to make out a case that Patil should not get the patent. Evidently, he has been a difficult person to handle in a personal hearing, but that cannot impact the manner of handling the merits of a case that is writ large on the face of the record. Clearly, IITB gained full title to the invention in terms of the IP Policy, and IITB assigned full title to the invention in favour of Patil, again consistent with the terms of the IP Policy. This can be the only logical, rational and indeed just outcome, and the Impugned Order suffers from complete non-application of mind to the merits of Patil’s contentions relating to ownership of the invention”.

The Court quashed the Impugned Order in its entirety, allowed Patil's Pre-Grant Opposition, and directed that the patent application be restored to the Controller's file with Patil substituted as applicant in place of IITB. The Controller was directed to process the application on merits under Sections 14 and 15 of the Act and pass a reasoned order within eight weeks, with the matter to be assigned to a senior officer not previously associated with the case. IITB was directed to extend cooperation and execute any documents required to give effect to the judgment.

Cause Title: Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors., (Neutral Citation: 2026:BHC-OS:19905)

Appearances:

Petitioner: Hiren Kamod, Legal Aid Counsel, Anees Patel, Ravindra Chile, Prashant Nakati, Advocates.

Respondent: Kajal Gupta, Dheer Sampat and Shweta Singh, M.V. Kini & Co., appeared for Respondent Nos. 1 and 3.

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