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Holds Dr. Tarkeshwar Patil Entitled to Patent Application Over IIT Bombay
Introduction: A 13-Year Patent Saga Ends in Favour of the Inventor
The has decisively ruled that Dr. Tarkeshwar Chandrakant Patil, a former PhD student and research assistant at the , is the rightful owner of a patent application for an invention titled “An Apparatus and a Method for In-Vivo Power Generation.” Justice Somasekharan Sundaresan, sitting on the , quashed the ’ order that had rejected the application and effectively left Patil without protection in India, even as identical patents were granted to him exclusively in the United States.
The Court directed the Controller to process the patent application with Patil as the applicant within eight weeks, ending what it described as “a tragic picture of the ecosystem in which intellectual property rights are dealt with.”
Case Background: From PhD Research to Ownership Dispute
Patil joined IIT Bombay as a Research Assistant in and later enrolled in the PhD programme, completing his doctorate in . The invention, which generates power for implanted medical devices, emerged from his doctoral research. IIT Bombay filed the patent application in India in , naming Patil as the first inventor alongside his guide, Prof. Siddhartha Prakash Duttagupta, and another student.
Disputes erupted between Patil and Duttagupta over the prosecution of the patent, particularly in the United States. By , the conflict escalated to IIT Bombay’s , Prof. P. V. Balaji, who—acting under the institute’s Intellectual Property (IP) Policy—executed a on , transferring all worldwide rights in the invention to Patil. The subsequently granted Patil two patents based on that assignment.
Despite this, the refused to recognize Patil as the applicant, flipping the recorded name between IIT Bombay and Patil multiple times without explanation. Patil was forced to file a in and obtained two High Court orders directing the Controller to hear him. When the Controller finally passed an order in , it rejected both Patil’s ownership claim and IIT Bombay’s substantive arguments, leaving the application in limbo.
Arguments Presented: The Battle Over a ‘Worldwide’ Assignment
Patil, represented by legal aid counsel, argued that the gave him full and exclusive rights to the invention worldwide, including in India. He contended that IIT Bombay’s continued pursuit of the patent after the assignment constituted “” under .
IIT Bombay and Duttagupta, represented by , argued that the assignment applied only to the United States and countries “foreign thereto,” not to India. They further claimed that Patil was bound by IIT Bombay’s , which vests all intellectual property in the institute, and that the did not override that policy.
The Controller, in its impugned order, held that Patil, as an employee paid to research, could not claim ownership and that IIT Bombay had failed to prove its own right to file the application—a circular reasoning the High Court found untenable.
Legal Analysis: The Court Unravels the Knot
Justice Sundaresan conducted a thorough examination of the , the executed by Patil in December 2013, and the . He held that the did apply to Patil because he had signed the , which explicitly stated he had read and agreed to the policy. However, the same policy designated the Dean, R&D as the authority to grant waivers, and the Dean had exercised that power by executing the assignment.
The Court rejected IIT Bombay’s interpretation of the as “wholly absurd” and “inflict[ing] serious violence not just to the language of a legally binding instrument but also to plain logic and reason.” It noted that the invention had only been filed in two jurisdictions—India and the United States—and that the assignment explicitly covered “all countries foreign thereto” as well as “all other applications for the invention anywhere in the world.”
“There are only two jurisdictions involved – India and USA. Both stood assigned,” the Court observed. It further held that it was impossible to read the assignment as allowing Patil to exploit the invention freely in the US while IIT Bombay retained rights in India. “I am afraid this cannot be countenanced,” the Court stated.
Key Observations: A ‘Tragic Viewing’ of the IP Ecosystem
The judgment did not shy away from criticizing the Controller’s handling of the case. Justice Sundaresan reviewed a video recording of a hearing held on , which Patil obtained under the .
“I have examined the video recording in its entirety, which makes for tragic viewing,” the Court wrote. “It tells the story of a frustrated scientist, bitter to the bone about how his invention is treated, armed with a Court order, unaware that advocacy is an art and not a science, browbeating in a bid to prevent being browbeaten – all in all, painting a tragic picture of the ecosystem in which intellectual property rights are dealt with.”
The Court also highlighted the loss of patent term: “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.”
Court’s Decision: Clear Directions for a Fresh Start
The High Court allowed Patil’s under Section 25(1)(a), declaring that IIT Bombay’s continued pursuit of the patent after , was wrongful. It quashed the Controller’s order of , in its entirety and restored the patent application to the Controller’s file with Patil substituted as the applicant.
The Court directed that:
- The Controller must process the patent application on merits under , hearing Patil on all objections.
- A final reasoned order must be passed within eight weeks from the date the judgment is uploaded.
- The is requested to assign the application to a senior officer who has not previously handled it, uninfluenced by earlier orders.
- IIT Bombay, having divested itself of all rights, need not be heard but must cooperate and execute any required documents.
The Court also requested that the legal aid counsel continue to represent Patil before the Controller to ensure professional presentation of the merits.
Implications: A Cautionary Tale for Institutional IP Management
The judgment underscores that institutions like IIT Bombay cannot resile from binding assignments executed by their designated authorities. It also serves as a sharp rebuke to the Patent Office for its prolonged and erratic handling of the matter, which cost an inventor more than half of his statutory protection period. The decision reaffirms that once an assignment is validly executed, the assignee steps into the shoes of the assignor and is entitled to full recognition, regardless of earlier institutional policies or internal disputes.
