Under the Patents Act, 1970, ownership of an invention and the right to pursue a patent application are key considerations. Disputes may arise between an inventor and an institution over ownership of the IP, especially where rights have later been transferred through an assignment. In such cases, the Controller needs to examine the relevant agreements, institutional policies and evidence of ownership before deciding who is entitled to pursue the patent application. Failure to properly determine these issues may delay examination of the invention and affect the applicant’s ability to secure patent protection within the statutory term.
Calling the mishandling of a dispute relating to the rights of an inventor by the Controller as a matter that “borders on the tragicomic”, the Bombay High Court exercised its concurrent and co-extensive appellate powers under Section 117A of the Patents Act, 1970, and held that, by reason of the Deed of Assignment executed by the Indian Institute of Technology, Bombay (IITB) in favour of Dr. Tarkeshwar Chandrakant Patil, IITB had no residual right, title or interest in the patent application. The Court concluded that Dr. Patil must be treated as the owner of the invention and that the patent application, as if filed by Dr. Patil, must be processed and dealt with in accordance with law by the Controller in a time-bound manner.
The dispute relating to the ownership of an invention came before the Bombay High Court through an appeal filed by Dr. Tarkeshwar Chandrakant Patil, an original inventor, against the rejection of the patent application filed by IITB on procedural grounds rather than on the merits of the invention. Dr. Patil challenged the Controller’s refusal to recognise his ownership of the invention and his right to pursue the patent application, as well as the refusal to consider his submissions on the merits of the invention. According to Dr. Patil, recognition of his rights and consideration of the application on merits should culminate in the grant of a patent in his name.
Allowing the appeal in Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors.[Commercial Miscellaneous Petition (L) No. 12000 of 2026], September 8, 2026, the Court declared Dr. Patil the sole owner of the invention covered by Patent Application No. 2808/MUM/2013, titled “An Apparatus and a Method for In-Vivo Power Generation”, filed by IITB on August 28, 2013. The Court set aside the impugned order dated July 17, 2025, restored the patent application and directed the Controller to process it with Dr. Patil as the applicant, on merits, within eight weeks.
Dispute Before The Court
The two questions that arose before the Court in this appeal were:
A] Whether Patil has rights to the intellectual property covered by the Patent Application worldwide, including in India; and
B] Whether the Controller’s conduct of proceedings calls for an intervention in exercise of the appellate jurisdiction of this Court.
Factual Matrix
The dispute relating to the patent application arose before the Controller when Form 6 submitted by Dr. Patil for being recognised as the applicant, on the strength of the worldwide assignment, was allowed on November 15, 2017 and subsequently confirmed by an order dated December 7, 2017. However, the order was withdrawn on December 28, 2017, on the ground that IITB’s own proof of right from the inventors had never been filed and, therefore, an assignment by IITB to Dr. Patil could not be considered. The Patent Office records again showed Dr. Patil as the applicant in September and October 2018, but his name was subsequently replaced with IITB without any order or explanation.
This led Dr. Patil to file a pre-grant opposition under Section 25(1)(a) of the Patents Act in June 2019 on the ground of wrongful obtaining. The Controller took nearly twelve years to dispose of the patent application, ultimately refusing to recognise Dr. Patil as the applicant and declining to examine the merits of the invention. The Controller held that IITB had failed to submit proof of right from Dr. Patil under Section 7(2) of the Act and therefore could not proceed with the application.
The Controller also dismissed the pre-grant opposition, holding that the case did not fall under wrongful obtaining under Section 25(1)(a), as the application had been filed with the knowledge and consent of Dr. Patil, who was named as the first inventor. The Controller observed that wrongful obtaining would arise only where an application had been filed without the knowledge of the inventor. Consequently, the pre-grant opposition was dismissed, and the patent application was refused under Section 15 for non-compliance with Section 7(2). Aggrieved by the order, Dr. Patil preferred an appeal before the Bombay High Court.
Dispute between Inventor and Applicant
A patent application for “An Apparatus and a Method for In-Vivo Power Generation” was filed by IITB in India in August 2013, naming Dr. Patil as an inventor. Dr. Patil was pursuing his Ph.D. at IITB under the guidance of Prof. Siddhartha Prakash Duttagupta when the invention was developed and the application was filed. A dispute over the prosecution of the corresponding application in the United States arose between Dr. Patil and Prof. Duttagupta, culminating in IITB’s Dean, Research and Development, executing a Deed of Assignment on July 3, 2017, transferring all worldwide rights in the invention to Dr. Patil.
Patents were granted exclusively to Dr. Patil in the United States in 2018 and 2020. However, the application for the same invention remained pending before the Indian Patent Office for nearly thirteen years due to the ownership dispute. IITB maintained that its Intellectual Property Policy vested ownership of the invention in the institution, whereas Dr. Patil claimed that he was the sole owner of the patent application on the basis of the Deed of Assignment executed by IITB in his favour in July 2017.
Court’s Analysis and Findings
The Court examined the evidence and the manner in which proceedings had been conducted before the Controller over a period of nearly 13 years. Coming down heavily on the delay in processing the patent application, the Court noted that the prolonged administrative mishandling had deprived the inventor of a significant portion of the 20-year statutory patent term. The Court also observed that Dr. Patil had approached the Court multiple times to secure an opportunity of being heard before the Controller. However, despite the directions of the Court, Dr. Patil’s right of audience appeared to have been treated merely as a right to sit in at the hearing granted to IITB.
The Court examined IITB’s Intellectual Property Policy and found that the ownership of the invention had initially vested in IITB under the policy. However, the subsequent Deed of Assignment executed on July 3, 2017, by the Dean, Research and Development, who was the designated authority competent to grant waivers under the policy, transferred the entire right, title and interest in the invention to Dr. Patil. The Court rejected IITB’s contention that the assignment was limited to the United States and did not extend to India. It held that the terms of the Deed of Assignment were clear and covered the invention and patent applications worldwide.
The Court also rejected the approach adopted by the Controller in brushing aside Dr. Patil’s ownership claim on the ground that he had been employed to conduct research and was paid a salary. The Court observed that the Controller had failed to examine the effect of the Deed of Assignment and the material available on record. Having executed a binding assignment transferring its rights to Dr. Patil, IITB could not continue to claim ownership of the invention.
Decision of the Court
Allowing the appeal, the Bombay High Court held that Dr. Patil was the sole owner of the invention by virtue of the worldwide Deed of Assignment executed by IITB. The Court allowed his pre-grant opposition under Section 25(1)(a) and declared that IITB’s continued pursuit of the patent application in its own name after July 3, 2017 was wrongful. Accordingly, the Court quashed and set aside the impugned order dated July 17, 2025, and directed that Dr. Patil be substituted as the applicant in place of IITB.
The Court restored the patent application to the file of the Controller and directed that it be examined on merits under Sections 14 and 15 of the Patents Act, after hearing Dr. Patil on the objections raised in the First Examination Report and any further objections. The Controller was directed to pass a final reasoned order within eight weeks from the date of uploading of the judgment. The Court also requested the Controller General to assign the matter to a senior officer who had not previously dealt with the application.
Conclusion
The decision highlights the importance of properly examining ownership disputes in patent applications, particularly where competing claims arise between an inventor and an institution. The Court observed that where two competing claimants assert title to a patent application, the Controller must engage with their submissions on merits so that the final order is meaningful. The Court also emphasised that the provisions relating to pre-grant opposition under Section 25(1) and examination of patent applications under Sections 14 and 15 must be applied in a manner that ensures due process and fair consideration.
In the present case, the Controller failed to recognise the effect of the worldwide Deed of Assignment executed by IITB in favour of Dr. Patil and rejected the patent application without examining the merits of the invention. The Court held that the subsequent assignment transferred ownership of the invention to Dr. Patil, leaving IITB with no residual right, title or interest. The Court accordingly recognised Dr. Patil as the rightful applicant and directed the Patent Office to examine the application afresh.
The ruling is also significant for the Court’s criticism of the prolonged administrative handling of the application, which resulted in the loss of nearly thirteen years of the statutory patent term without protection in India. Describing the matter as bordering on the “tragicomic”, the Court highlighted how the failure to properly address ownership and procedural issues can deprive an inventor of valuable patent protection. The decision reinforces the need for the Patent Office to deal with competing ownership claims and examination proceedings in a timely and judicious manner.
Author: DPS Parmar