बॉम्बे उच्च न्यायालय ने आईआईटी मुंबई के साथ पेटेंट विवाद में वैज्ञानिक डॉ. तरकेश्वर चंद्रकांत पाटिल के पक्ष में फैसला सुनाते हुए हस्तांतरण विलेख (Deed of Assignment) के आधार पर उन्हें एक जैव-चिकित्सा नवाचार (biomedical innovation) का एकमात्र पेटेंट आवेदक (sole patent applicant) स्वीकार किया।
MUMBAI — Delivering a significant judgment on institutional intellectual property assignments and administrative delays, the High Court of Judicature at Bombay has ruled in favor of scientist Dr. Tarkeshwar Chandrakant Patil, affirming him as the sole applicant and owner of a patent application for a biomedical innovation (Tarkeshwar Chandrakant Patil v. IIT, Bombay & Ors.).
A single-judge Bench comprising Justice Somasekhar Sundaresan set aside a decision issued by the Deputy Controller of Patents and Designs that had rejected the patent application. The High Court ordered the immediate restoration of the Indian patent application, directing patent authorities to substitute Dr. Patil as the sole applicant in place of the Indian Institute of Technology (IIT) Bombay.
Core Findings and Holdings
- Enforceability of Worldwide Assignment Deed: The High Court rejected IIT Bombay’s submission that a July 2017 Deed of Assignment transferred intellectual property rights exclusively for foreign jurisdictions like the United States. Justice Sundaresan held that the plain text of the assignment deed unambiguously transferred full, exclusive, and unencumbered worldwide right, title, and interest in the invention directly to Dr. Patil.
- Divestment of Institutional Standing: The Bench ruled that having executed a binding, total assignment of rights in 2017, IIT Bombay completely divested itself of legal interest in the subject matter. Consequently, the institute holds no locus standi and will not be heard in further patent prosecution proceedings before the Patent Office.
- Judicial Disapproval of Statutory Delays: The Court expressed deep concern over administrative inertia and contradictory rulings within the Patent Office. The Bench observed that procedural friction had consumed 13 years of the maximum 20-year statutory protection period, systematically frustrating a scientist pursuing his lawful entitlements.
- Mandate for Independent Re-evaluation: The Court remitted the restored application back to the Patent Office with explicit instructions that it be handled by a senior Controller of Patents who was not involved in previous adverse determinations, directing a final decision on technical merits within eight weeks.
Fact Sheet & Case Overview
| Attribute | Case Details |
| Case Citation | Tarkeshwar Chandrakant Patil v. IIT, Bombay & Ors. |
| Bench | Hon'ble Mr. Justice Somasekhar Sundaresan |
| Subject Technology | An "apparatus and a method for in-vivo power generation" designed to power implanted biomedical devices inside the human body without requiring recurring surgeries. |
| Initial Filing (2013) | IIT Bombay filed the original Indian patent application in August 2013, naming Dr. Patil as the primary inventor. |
| Resolution Deed (2017) | Following academic disputes regarding prosecution strategies, IIT Bombay executed a worldwide assignment deed transferring total IP ownership to Dr. Patil. |
| Foreign vs. Domestic Status | Dr. Patil successfully secured two granted US patents using the 2017 deed, whereas the Indian Patent Office rejected the application in July 2025 after a decade of administrative uncertainty. |
Judicial Commentary on Statutory Framework
Critiquing the systemic barriers faced by domestic innovators, Justice Somasekhar Sundaresan underscored the stark contrast between foreign grant success and domestic administrative delays:
"It is abundantly clear that Patil is the recognised owner of the invention sought to be patented. It is remarkable that he is a protected patentee in USA but the home country's statutory framework to grant the same protection has been mired in tragic circumstances."
The Bench highlighted that public academic institutions must adhere to contractual obligations entered into under their IP frameworks rather than subjecting researchers to multi-tier administrative resistance.
Order of the Court
The High Court issued the following directions:
- The impugned order of the Deputy Controller of Patents dated July 17, 2025, is quashed and set aside.
- The patent application stands restored to its original number on the file of the Patent Office.
- Dr. Tarkeshwar Chandrakant Patil shall be recorded as the sole applicant.
- IIT Bombay is excluded from further hearings on the application.
- The Controller General of Patents is requested to assign the file to a senior officer for expedited, independent evaluation on merits under Sections 14 and 15 of the Patents Act, 1970.
Legal Representation
- For the Appellant (Dr. Tarkeshwar C. Patil): Advocates Hiren Kamod, Anees Patel, Ravindra Chile, and Prashant Nakati.
- For Respondent No. 1 (IIT Bombay): Advocates Kajal Gupta, Dheer Sampat, and Shweta Singh, briefed by M.V. Kini & Co.
Discription: The Bombay High Court has ruled in favor of scientist Dr. Tarkeshwar Chandrakant Patil, declaring him the sole owner of a 13-year-old patent application for a biomedical innovation (Tarkeshwar Chandrakant Patil v. IIT, Bombay & Ors.).
Presiding over the case, Justice Somasekhar Sundaresan quashed a July 2025 order by the Patent Office that had rejected the application. The Court held that a July 2017 Deed of Assignment executed by IIT Bombay transferred full worldwide rights to Dr. Patil, rejecting the institute's claim that the agreement applied only to the United States.
Criticizing administrative delays that consumed 13 years of the patent's 20-year term, the Court ordered the immediate restoration of the application under Dr. Patil's name, excluding IIT Bombay from future proceedings.