'Tragic Picture Of IP Rights Ecosystem': Bombay High Court Rules Scientist, Not IIT Bombay, Owns Invention After 13-Year Battle

Observing that prolonged proceedings over a patent application had cost a scientist 13 years out of the 20-year statutory patent protection period, the Bombay High Court has recognised him as the sole owner of the invention and directed that his patent application be considered on merits.

Justice Somasekhar Sundaresan was dealing with a petition filed by Dr. Tarkeshwar Chandrakant Patil, an original inventor named in the patent application filed by IIT Bombay for an invention titled “An Apparatus and a Method for In-Vivo Power Generation”.

The invention essentially concerns generating power to keep devices implanted in the human body active.

The invention arose from research conducted during Patil's association with IIT Bombay. Patil was an employee of the institute from June 2008 to December 2010 and thereafter pursued his PhD there until August 2015.

The dispute concerned ownership of the invention and who was entitled to pursue the patent application. The Court held that IIT Bombay's 2012 Intellectual Property Policy applied to the invention.

Under a Revenue Sharing Agreement dated December 11, 2013 and an assignment dated May 19, 2014, Patil, his PhD guide Dr. K. N. Duttagupta and another inventor had vested their rights in the invention in IIT Bombay.

Differences subsequently arose between Patil and Duttagupta in the course of the patent process. The dispute eventually led IIT Bombay's Dean of Research and Development, the authority designated under the Intellectual Property Policy to grant waivers, to execute a Deed of Assignment in Patil's favour on July 3, 2017.

The Deed transferred to Patil the “full and exclusive right, title and interest” in the US patent application and all other applications for the invention anywhere in the world. It also authorised him to file patent applications in any or all countries.

The Court rejected IIT Bombay's argument that the worldwide assignment did not extend to India.

Justice Sundaresan described that position as “wholly absurd”, saying it inflicted “serious violence” on the language of the binding instrument as well as “plain logic and reason”.

“There are only two jurisdictions involved – India and USA. Both stood assigned,” the Court said.

It further observed that the assignment could not logically mean that Patil could freely exploit the invention in the United States while IIT Bombay retained the right to seek patent protection over the same invention in India.

“I am afraid this cannot be countenanced,” the Court said.

The judgment also traced the difficulties Patil faced in getting his status as applicant recognised.

After he submitted the 2017 Deed of Assignment, the Patent Office amended its records to show him as the applicant. That position was subsequently reversed.

Patil formally filed a pre-grant opposition in June 2019. The proceedings were repeatedly delayed, with hearings taking place over several years.

The matter was also the subject of earlier proceedings before a Division Bench, which directed that Patil be heard.

A hearing was eventually conducted on December 11, 2024. The Court examined the video recording of that hearing in its entirety.

“I have examined the video recording in its entirety, which makes for tragic viewing,” Justice Sundaresan observed.

The judgment described Patil as a “frustrated scientist, bitter to the bone about how his invention is treated” and said he was “browbeating in a bid to prevent being browbeaten”. The Court said the hearing painted “a tragic picture of the ecosystem in which intellectual property rights are dealt with.”

The Patent Office ultimately passed an order on July 17, 2025. It rejected Patil's pre-grant opposition and refused to allow the patent application to proceed for grant, holding that the statutory requirements concerning proof of the applicant's right had not been met.

The High Court found this approach untenable. It noted that the impugned order amounted to an “all-round rejection of everything before the Controller”, with Patil's ownership submissions rejected, his submissions on the merits of the patent application left unconsidered, and IIT Bombay's merits submissions also rejected without being dealt with.

The Court specifically took note of the time lost in the proceedings.

"Patil has thereafter been made to run from pillar to post – in all, costing the invention statutory patent protection for thirteen years out of the 20-year protection available in law and that too at the hands of an institution that claims to be desirous of being declared the owner but has not even appealed the rejection of the Patent Application.,” it said.

The Court further remarked that Patil was “a protected patentee in USA” while “the home country's statutory framework to grant the same protection has been mired in tragic circumstances.”

Ultimately, the Court held that the July 3, 2017, Deed had transferred the relevant rights to Patil. The Deed operated prospectively, meaning that from July 3, 2017, Patil was the sole owner of the invention and the patent application.

The Court allowed Patil's pre-grant opposition under Section 25(1)(a) of the Patents Act and recognised him as the inventor and applicant. It quashed the July 17, 2025 order in its entirety.

The patent application has been restored to the Controller's file, with Patil substituted as the applicant. The Controller has been directed to process the application on merits under Sections 14 and 15 after hearing Patil on the objections in the First Examination Report dated July 25, 2019 and any further objections.

A final reasoned order is to be passed within eight weeks from the date the judgment is uploaded on the Bombay High Court's website.

The court also requested the Controller General to assign the application to a senior officer other than the officer who passed the impugned order or any officer who had heard the matter earlier.