In Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors., Justice Somasekhar Sundaresan of the Bombay High Court has declared a scientist, not IIT Bombay, the rightful applicant for a patent over an invention he developed while pursuing his PhD at the institute — quashing a Patent Office order that had rejected the application after a delay the Court described as "tragicomic."
The invention — an apparatus and method for in-vivo power generation, designed to power medical devices implanted inside the human body — was developed by Dr. Patil during his doctoral research at IIT Bombay. In July 2017, IIT Bombay executed a worldwide Deed of Assignment transferring the full, exclusive right, title and interest in the invention to Dr. Patil. Despite that assignment, the institute continued to prosecute the same patent application in its own name before the Controller of Patents. Years later, and after roughly thirteen years of pendency, the Controller passed an order that rejected the claims of both Dr. Patil and IIT Bombay simultaneously, without resolving who was actually entitled to pursue the application.
The Court held that IIT Bombay could not continue prosecuting the application after having executed a worldwide assignment in Dr. Patil's favour — rejecting the institute's argument that the deed covered only assignment rights in the United States and not in India. It allowed Dr. Patil's pre-grant opposition, quashed the Controller's rejection order, and directed that he be substituted as the applicant in place of IIT Bombay. The Controller was directed to decide the application afresh on its merits under Sections 14 and 15 of the Patents Act, 1970, within eight weeks, with the matter assigned to a senior officer who had no prior connection to the case. The Bench was sharply critical of the Patent Office's handling of the matter, noting that thirteen years of delay had already consumed much of the twenty-year term a granted patent would carry, and describing the situation as "tragicomic."