In a patent battle pending for over a decade in relation to a crucial biomedical invention, the Bombay High Court has ruled in favour of an Indian scientist and against the Indian Institute of Technology (IIT) Bombay [Tarkeshwar Chandrakant Patil v. IIT, Bombay & Ors]

Justice Somasekhar Sundaresan declared Dr Tarkeshwar Chandrakant Patil as the original inventor of the patent and directed a Deputy Controller of Patents and Designs to recognize him as the applicant in a patent application filed by IIT Bombay (IITB) in 2013.

The Court ruled that IIT Bombay could not have pursued the patent application on its own after it executed a worldwide assignment deed in July 2017 to transfer to Patil the full and exclusive right, title and interest in the invention.

The Court rejected the argument that the deed of assignment did not extend to India but only to the United States.

It, thus, ordered the Controller to process the patent application, with Patil as the applicant. The application has to be dealt with by a senior officer other than the one who had dealt with it in the past, the Court directed.

“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 Court said. 

The dispute involved an "apparatus and a method for in-vivo power generation." This technology keeps medical implants active inside the human body. 

IITB had filed a patent application for the invention in August 2013. The application recognized Patil as the prime inventor

However, before the application could be decided, internal disputes arose between Patil and his PhD guide. To resolve this, IITB executed a worldwide assignment deed in July 2017. This binding contract transferred all intellectual property rights exclusively to Patil.

Despite this transfer, IITB contested Patil's rights in India. They argued the worldwide assignment only applied to the United States. Patil had already secured two US patents based on the deed.

The patent application filed by IITB was rejected last year.

In the decision, the Controller rejected Patil's submissions on the merits of his ownership. It also said that IITB had not demonstrated that it was entitled to pursue the application in its name because Patil had not authorised it to be the applicant.

The matter then reached the High Court.

In the ruling delivered on September 8, the Court held that Patil is the sole owner of the invention and of the patent application.

It criticised the Patent office for delaying the proceedings for over a decade. The judge observed that a premier scientist was remarkably frustrated for a prolonged period of thirteen years. 

The Court added that he has been systematically frustrated in the pursuit of his entitlements flowing from the Deed of Assignment.

It thus restored the patent application with a direction that Patil shall be heard as the applicant. It added that IITB, having divested itself of all right, title and interest in the invention, need not be heard in the proceedings.

Advocates Hiren Kamod, Anees Patel, Ravindra Chile and Prashant Nakati appeared for Patil.

Advocates Kajal Gupta, Dheer Sampat and Shweta Singh briefed by MV Kini & Co. appeared for IIT Bombay.

[Read Judgment]