Bombay HC on Inventor’s Rights & IIT Bombay Patent

Judgment dated of the High Court of Bombay in COMMERCIAL MISCELLANEOUS PETITION (L) NO. 12000 OF 2026 of 
Dr. Tarkeshwar Chandrakant Patil
Versus  Indian Institute of Technology, Bombay and others

The Petitioner, Dr. Tarkeshwar Chandrakant Patil (“Patil”) is admittedly an original inventor of the proposed patent, and named as such in the Patent Application, which was filed by the Indian Institute of Technology, Bombay (“IITB”). The invention is titled “An Apparatus and a Method for In-Vivo Power Generation”, essentially entailing generation of power to keep devices implanted in the human body active. The invention is based on the research conducted in the course of Patil’s association with IITB.

The said patent application was rejected and the petitioner’s ownership of invention. The submissions of IIT Bombay were also rejected.

Patil joined IITB as a Research Assistant on June 17, 2008. In this role, he was an employee. Having been selected for the Ph.D. programme, Patil joined it as a student on December 30, 2010, resigning as a Research Assistant with effect from December 31, 2010. This programme was intended to culminate in a Ph.D. degree for Patil. 9. By an award letter dated March 18, 2013, Patil was awarded a Senior Research Fellowship by the Council of Scientific and Industrial Research (“CSIR”) for research in fuel cell and biomedical applications. IITB changed his Ph.D. category from “Project Staff” to “Fellowship Awardee” with effect from April 1, 2013. Until then, his research at the Department of Electrical Engineering at IITB had been funded as project staff under IITB’s Nanoelectronics project; from April 1, 2013, the funding came from CSIR. The research work, which led to the invention sought to be patented, continued as Page 4 of 57 September 8, 2026 Chaitanya Uploaded on – 08/09/2026 Downloaded on – 16/09/2026 21:54:05 Judgement-COMMP(L)-12000-2026-F.docx part of the Ph.D. programme. Patil successfully defended his Ph.D. Thesis titled “Micro/Nano-Fuel Cell for Portable Applications: A Multi-Fuel Solution” on March 4, 2015. IITB formally awarded him the Ph.D. degree on August 8, 2015. 10. The research work carried out by Patil forms an integral part of the Doctoral Thesis successfully defended by him and has a central role in the invention covered by the Patent Application. Applications to patent the invention based entirely on Patil’s doctoral thesis work, were filed first in India on August 28, 2013, and then in the United States of America (“USA”) on May 16, 2014. USA has granted Patil, exclusively, two successive patents in respect of the invention (on a divisional application and on the parent application). However, the Patent Application filed in India has languished, mired in extraordinary proceedings played out before the Controller’s office for thirteen years, as will be seen in this Judgement.

In exercise of the appellate powers under Section 117A, this Court being clothed with the concurrent and co-extensive powers as those available to the Controller, I have no hesitation in holding that by reason of the Deed of Assignment executed by IITB in favour of Patil, IITB has no residual right, title or interest in the Patent Application. The inexorable conclusion is that Patil must be treated as the owner of the invention and the Patent Application, as if filed by Patil, must be processed and dealt with in accordance with law by the Controller in a time-bound manner.

To summarise the analysis above, and in exercise of this Court’s appellate and inherent powers, the following conclusions are recorded and directions issued: A] The IP Policy of 2012 applied to the invention. By executing the Revenue Sharing Agreement on December 11, 2013 and the assignment dated May 19, 2014, Patil, Duttagupta and Pushpagandha accepted the IP Policy and vested their rights in the invention in IITB. Patil’s contention that the IP Policy did not bind him for want of a signed IP Policy Agreement Form is rejected; B] The same IP Policy designates the Dean, R&D as the authority competent to grant waivers from its application. By the Deed of Assignment dated July 3, 2017, executed by the Dean, R&D after the Page 54 of 57 September 8, 2026 Chaitanya Uploaded on – 08/09/2026 Downloaded on – 16/09/2026 21:54:05 Judgement-COMMP(L)-12000-2026-F.docx institutional mechanism had been invoked, IITB sold, assigned and transferred to Patil the full and exclusive right, title and interest in the invention for the United States and all countries foreign thereto, in the application in USA and in all other applications for the invention anywhere in the world, and authorised him to file applications in any country in his own name. The contention that the Deed of Assignment does not extend to India is rejected. The Deed of Assignment operates prospectively from its execution; from that date Patil is the sole owner of the invention and of the Patent Application, and no question of retrospectivity arises or is relevant; C] CSIR has no subsisting claim. Under its own Office Memorandum dated July 29, 2011, ownership of intellectual property generated by a research fellow vest in the host institution and is governed by that institution’s IP Policy, and by its email dated June 8, 2018 CSIR disclaimed any right to interfere. Therefore, the CSIR Undertaking dated March 21, 2013 does not detract from Patil’s title; D] The Pre-Grant Opposition filed by Patil under Section 25(1)(a) of the Act is allowed by declaring that Patil be recognised as the inventor and applicant in the Patent Application; continued pursuit of the Patent Application in its own name after July 3, 2017 was wrongful. The Impugned Order dated July 17, 2025 is quashed and set aside in its entirety; F] The Patent Application is restored to the file of the Controller with Patil substituted as the applicant in place of IITB; Patil’s Form 6 and Form 13 dated October 31, 2017 stand allowed. The Controller shall process the Patent Application on merits under Sections 14 and 15 of the Act, after hearing Patil as the applicant on the objections in the FER dated July 25, 2019 and any further objections, and shall pass a final reasoned order within eight weeks from the date of upload of this Judgement on this Court’s website; G] The Controller General is requested to assign the Patent Application to a senior officer other than the officer who passed the Impugned Order, or any other officer who has heard this matter in the past, and such officer shall proceed uninfluenced by the Impugned Order, the order dated December 28, 2017 and the Dhumane Email, and process the Patent Application in compliance and in accordance with the declarations made in this judgement; H] The Legal Aid Counsel who have represented Patil in this Appeal are requested to represent him before the Controller, so that the merits of the Patent Application are professionally presented and do not suffer from the overhang of the long and bitter battle waged between IITB and Patil; I] IITB, having divested itself of all right, title and interest in the invention, need not be heard in the proceedings pursuant to this Judgement, but shall extend all cooperation and execute any document that the Controller may require to give effect to the declarations made herein; and J] Nothing in this Judgement is an expression of an opinion on merits of the Patent Application;