In a significant legal development, the Bombay High Court has resolved a protracted patent dispute involving a crucial biomedical invention, ruling in favor of Indian scientist Dr. Tarkeshwar Chandrakant Patil against the Indian Institute of Technology (IIT) Bombay. The case, Tarkeshwar Chandrakant Patil v. IIT, Bombay & Ors, has lingered for over a decade.
Justice Somasekhar Sundaresan presided over the case, ultimately recognizing Dr. Patil as the original inventor of the patent in question. The Court directed the Deputy Controller of Patents and Designs to recognize Dr. Patil as the official applicant in the patent application initially filed by IIT Bombay in 2013.
The Court found that IIT Bombay was not in a position to pursue the patent application independently. This decision comes after the institute executed a worldwide assignment deed in July 2017, transferring all rights, title, and interest in the invention to Patil. The Court dismissed IIT Bombay’s claim that this assignment deed only applied to the United States, asserting that it extended globally, including India.
The invention at the center of this legal battle is an “apparatus and a method for in-vivo power generation,” which is designed to keep medical implants operational within the human body. IIT Bombay had filed the patent application in August 2013, with Patil recognized as the principal inventor. However, internal disputes between Patil and his PhD advisor complicated matters, leading to the assignment deed.
Despite the execution of this deed, IIT Bombay disputed Patil’s rights to the patent in India, arguing that the assignment was only applicable to the United States. This was despite Patil having already obtained two U.S. patents based on the deed.
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In the previous year, the patent application filed by IIT Bombay was rejected, with the Controller of Patents dismissing Patil’s claims to ownership. The Controller argued IIT Bombay had not substantiated its entitlement to pursue the application in its name, given the lack of authorization from Patil.
The matter escalated to the Bombay High Court. In its September 8 ruling, the Court confirmed Patil as the exclusive owner of the invention and patent application. The judgment criticized the patent office for unnecessary delays in the proceedings, noting that the scientist faced protracted frustration over thirteen years.
The Court underscored that Patil’s rights, as set out in the Deed of Assignment, were systematically undermined, and instructed that the patent application be reinstated with Patil as the applicant. The ruling also stated that IIT Bombay, having relinquished all rights through the assignment, need not partake in the proceedings.
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The legal representation for Dr. Patil included Advocates Hiren Kamod, Anees Patel, Ravindra Chile, and Prashant Nakati. The legal team for IIT Bombay comprised Advocates Kajal Gupta, Dheer Sampat, and Shweta Singh, briefed by MV Kini & Co.
[Read Judgment]
