Patent Act | Deed Of Assignment Executed By Research Institution In Favour Of Inventor Operates As A Complete Waiver Of Intellectual Property Rights: Bombay High Court

"The Deed of Assignment is well backed by due authorisation and is consistent with, and an outcome of, the institutional framework and the IP Policy. By executing the Deed of Assignment, the Dean, R&D waived the inherent position in the IP Policy that all intellectual property of invention pursuant to research by IITB Personnel vested in IITB." Bombay High Court, in a significant ruling dated September 8, 2026, held that once a premier research institution executes a worldwide assignment of intellectual property in favour of its inventor, it effectively waives all its residual rights, necessitating the Controller of Patents to recognize the inventor as the sole applicant.

A bench led by Justice Somasekhar Sundaresan observed that such a deed, executed by a competent institutional authority, overrides prior institutional policies regarding ownership, regardless of whether the invention was developed using institutional resources.

The petitioner, Dr. Tarkeshwar Chandrakant Patil, an alumnus and former research assistant at IIT Bombay (IITB), developed an invention titled “An Apparatus and a Method for In-Vivo Power Generation” during his doctoral research. While IITB initially filed the patent application, internal disputes between the petitioner and his guide led the Dean of Research and Development to execute a "Deed of Assignment" in 2017, transferring all rights, title, and interest in the invention to the petitioner. Despite this, the Controller of Patents refused to recognize the petitioner as the applicant, leading to a thirteen-year legal stalemate where the invention received patent protection in the USA but remained unexamined in India.

The primary question before the court was whether the Deed of Assignment executed by IITB conferred absolute ownership of the intellectual property upon the petitioner, including the right to pursue patent applications in India. The court was also called upon to determine whether the Controller of Patents acted with procedural impropriety by repeatedly oscillating the status of the applicant without assigning reasons, and whether the institution’s IP policy could be invoked to negate a contractually executed assignment.

Validity of the Deed of Assignment

The court examined the scope of the 2012 IP Policy of IITB and held that while the policy generally vests intellectual property rights in the institution, it also provides for waivers. The court found that the Dean of Research and Development was the designated competent authority to grant such waivers. The bench noted that the Deed of Assignment was "crystal clear" in its intent to transfer worldwide rights to the petitioner, and its legality could not be challenged by the institution after the fact.

"The Deed of Assignment is an informed decision taken at an institutional level by IITB, resulting in the formation of a binding contract enabling Patil to have full ownership of the invention."

Rejection of 'Seller's Remorse' Arguments

The court firmly rejected IITB’s contention that the assignment was limited to the United States and did not include India. Justice Sundaresan termed this interpretation "wholly absurd," noting that it would lead to a fractured application of property rights where an inventor holds title in one jurisdiction but is denied it in another for the same invention. The court emphasized that the institution must respect its own institutional resolutions and cannot "resile" from solemn contracts.

"The contention that the Deed of Assignment does not extend to India is rejected. The Deed of Assignment operates prospectively from its execution; from that date Patil is the sole owner of the invention and of the Patent Application."

Critique of the Controller's Conduct

The court expressed deep concern over the "tragicomic" manner in which the Controller of Patents handled the matter. The bench noted that the Controller’s office repeatedly amended its internal portal to switch the applicant between IITB and the petitioner without any orders or explanation. The court characterized the Controller’s refusal to process the patent—based on the premise that IITB’s proof of right was not established—as a failure of duty, especially when the petitioner had clearly demonstrated his title via the Deed of Assignment.

"The name of the Applicant has been merrily tampered with and changed without giving reasons. The Controller’s Office has forgotten the substance of issues, preferring to tie up the Patent Application in knots."

Final Directions and Institutional Accountability

The court quashed the impugned order and directed the Patent Office to substitute the petitioner as the applicant in place of IITB. The court further ordered the Controller General to appoint a new, senior officer—untainted by prior proceedings—to process the application on its merits under Sections 14 and 15 of the Patents Act, 1970, within eight weeks. The court underscored that the petitioner should not be deprived of his rights due to institutional bureaucracy.

Date of Decision: 08 September 2026