--- title: "Bombay High Court Recognises Scientist as Sole Owner of Invention, Sets Aside Patent Rejection After 13-Year Dispute with IIT Bombay" date: 2026-10-16 author: "King Stubb & Kasiva" url: https://ksandk.com/newsletter/iit-bombay-patent-ownership-assignment/ --- # Bombay High Court Recognises Scientist as Sole Owner of Invention, Sets Aside Patent Rejection After 13-Year Dispute with IIT Bombay Posted On - 16 October, 2026 • By - King Stubb & Kasiva The Bombay High Court, in Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors., held that Dr. Tarkeshwar Chandrakant Patil was the sole owner of an invention titled “An Apparatus and a Method for In-Vivo Power Generation”, following a worldwide Deed of Assignment executed by IIT Bombay (“IITB”) in his favour. The Court set aside the rejection of the patent application by the Deputy Controller of Patents and Designs, observing that the Patent Office had failed to properly consider the assignment and the material on record over nearly thirteen years. The Court directed that the application be restored with Dr. Patil substituted as the applicant and be decided on its merits by a different senior officer within eight weeks. ## **Facts of the Case** Dr. Patil joined IITB as a Research Assistant in 2008 and subsequently pursued his Ph.D. at the institution. His research concerned an apparatus and method for generating power to keep devices implanted in the human body active. The patent application was filed by IITB on 28 August 2013, naming Dr. Patil as the principal inventor, along with Prof. Siddhartha Prakash Duttagupta and Ramesh Pushpagandha as co-inventors. Dr. Patil’s corresponding applications in the United States subsequently resulted in two patents being granted exclusively in his name. Disputes arose between Dr. Patil and IITB concerning the prosecution of the patent applications and the ownership of the underlying intellectual property. Although IITB’s Intellectual Property Policy initially vested ownership of intellectual property generated by its personnel in the institution, the Dean, Research and Development, executed a worldwide Deed of Assignment dated 3 July 2017, transferring the full right, title and interest in the invention to Dr. Patil. Following the assignment, Dr. Patil applied to have his name substituted as the applicant in the Indian patent application. The Controller initially amended the records to reflect his name but subsequently reversed the change. After prolonged proceedings, the Deputy Controller rejected the patent application by an order dated 17 July 2025, while also dismissing Dr. Patil’s pre-grant opposition. The Controller reasoned, inter alia, that IITB had not sufficiently established ownership of the application because proof of Dr. Patil’s right in its favour had not been furnished. Aggrieved by the rejection and the failure to recognise his ownership, Dr. Patil approached the Bombay High Court under Section 117A of the Patents Act, 1970. ## **Issue before the Court** Whether the Deed of Assignment executed by IITB transferred the ownership of the invention and the patent application to Dr. Patil, including in India, and whether the Controller’s handling of the proceedings and rejection of the application warranted appellate intervention. ## **Findings of the Court** The Court examined IITB’s Intellectual Property Policy, the Revenue Sharing Agreement executed by the inventors in December 2013 and the Deed of Assignment dated 3 July 2017. It held that Dr. Patil was bound by IITB’s Intellectual Property Policy, under which the intellectual property initially vested in IITB. However, the Policy also empowered the Dean, Research and Development, to grant waivers from its application. The Court found that the Deed of Assignment had been executed by the competent authority following the institutional process invoked to resolve the disputes between the parties. The instrument transferred the full and exclusive right, title and interest in the invention and authorised Dr. Patil to pursue patent applications in any country in his own name. The Court rejected IITB’s contention that the assignment covered the United States and other foreign countries but excluded India, holding that such an interpretation was contrary to the clear language of the instrument. The Court also considered the undertaking executed by Dr. Patil in favour of the Council of Scientific and Industrial Research (“CSIR”). It observed that CSIR had subsequently clarified that it had no right to interfere with the prosecution of the patent application. Accordingly, the undertaking did not detract from Dr. Patil’s ownership. On the conduct of the Patent Office, the Court found that the Controller had failed to properly engage with the documentary evidence and the legal consequences of the assignment. The impugned order rejected Dr. Patil’s claim to ownership while simultaneously refusing to allow IITB to proceed with the application for want of proof of right. The Court considered this approach untenable, particularly when the assignment and the relevant records were available before the Controller. The Court noted that the application had remained unresolved for nearly thirteen years, substantially delaying the availability of patent protection in India. It emphasised that the Controller was required to adjudicate the matter on its merits and could not disregard a binding assignment executed by IITB. The Court clarified, however, that its findings concerned ownership and the proper processing of the application, and did not determine whether the invention satisfied the substantive requirements for the grant of a patent. ## **Held** The Bombay High Court allowed the petition and declared Dr. Patil to be the sole owner of the invention and the patent application. It allowed his pre-grant opposition under Section 25(1)(a) of the Patents Act, 1970, and held that IITB’s continued pursuit of the application in its own name after 3 July 2017 was wrongful. The Court quashed and set aside the impugned order dated 17 July 2025 and directed that the patent application be restored to the Controller’s file, with Dr. Patil substituted as the applicant in place of IITB. His applications in Form 6 and Form 13, both dated 31 October 2017, were also allowed. The Controller was directed to consider the application on its merits under Sections 14 and 15 of the Act, after hearing Dr. Patil on the objections raised in the First Examination Report dated 25 July 2019 and any further objections, and to pass a reasoned order within eight weeks from the date of upload of the judgment. The Controller General was requested to assign the matter to a senior officer who had not previously been associated with it. IITB was directed to cooperate and execute any documents required to give effect to the judgment. The Court expressly clarified that it had not expressed any opinion on the merits of the patent application itself. ## **Conclusion** The judgment underscores the binding effect of a valid assignment of intellectual property and the importance of giving effect to institutional decisions made by an authorised body. It also highlights the obligation of the Patent Office to consider the material before it and issue reasoned decisions in accordance with law. By restoring the application and prescribing a strict timeline for its reconsideration, the Court sought to ensure that the dispute over ownership would no longer obstruct the substantive examination of the invention. *Last Updated on 16 October, 2026* Get King Stubb & Kasiva’s legal updates in your Google feed[![Add King Stubb & Kasiva as a preferred source on Google](https://ksandk.com/wp-content/uploads/google_preferred_source_badge_light_en@2x.png)](https://www.google.com/preferences/source?q=https://ksandk.com/) --- ## Office Locations - [New Delhi](https://ksandk.com/locations/top-corporate-law-firm-in-delhi/) (HQ): +91-11-41318190 | info@ksandk.com - [Mumbai](https://ksandk.com/locations/top-corporate-law-firm-in-mumbai/): 3 offices (Nariman Point, Lower Parel, Andheri) | mumbai@ksandk.com - [Bangalore](https://ksandk.com/locations/top-corporate-law-firm-in-bangalore/): bangalore@ksandk.com - [Chennai](https://ksandk.com/locations/chennai/): chennai@ksandk.com - [Hyderabad](https://ksandk.com/locations/hyderabad/): hyderabad@ksandk.com - [Pune](https://ksandk.com/locations/pune/): pune@ksandk.com - [Kochi](https://ksandk.com/locations/kochi/): kochi@ksandk.com ## Contact - [Contact Page](https://ksandk.com/contact-us/) - General: info@ksandk.com | +91-11-41318190 - WhatsApp: +91-7428567444 - [Privacy Statement](https://ksandk.com/privacy-statement/) - [Terms of Use](https://ksandk.com/terms-of-use/)