Bombay High Court Holds a Patent Assignment Covering All Foreign Countries Extends to India and Declares the Researcher Sole Applicant

Kaustav Chowdhury

8 minutes ago

6 min read

Background and Facts

A patent assignment executed by an institution in favour of its own researcher, expressed to cover the United States and all countries foreign thereto, also carries the Indian rights. So held the Bombay High Court in Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay and Others [Commercial Miscellaneous Petition (L) No. 12000 of 2026], neutral citation 2026:BHC-OS:19905, in a judgment that also quashed a refusal order and sent a thirteen year old application back to the Patent Office with an eight week deadline.

Dr. Patil developed an invention titled "An Apparatus and a Method for In-Vivo Power Generation", intended for implantable medical devices, during doctoral research at IIT Bombay. The institution filed Patent Application No. 2808/MUM/2013 on August 28, 2013, naming Dr. Patil as prime inventor. Under the institution's 2012 intellectual property policy, accepted by the researcher through a revenue sharing agreement in December 2013, the institution initially held the rights.

On July 3, 2017, IIT Bombay's Dean, Research and Development executed a Deed of Assignment transferring full and exclusive right, title and interest to Dr. Patil for the United States and all foreign countries, and authorising him to prosecute the invention worldwide. He obtained two United States patents in his own name. In India the application drifted. The Patent Office record moved the applicant designation between the researcher and the institution without reasoned orders, and by order dated July 17, 2025 the Deputy Controller refused the application under Section 15 of the Patents Act, 1970 on the footing that proof of the right to apply under Section 7(2) had not been established.

Key Legal Issue

The question was whether an assignment worded by reference to the United States and countries foreign thereto excluded India, and whether the Controller could refuse the application under Section 15 for want of proof of right where a written assignment was on the record.

The Bombay High Court's Ruling

Justice Somasekhar Sundaresan held that the assignment extended to India, that Dr. Patil is the sole owner of the invention and the application, and that the refusal order could not stand. The judgment was reserved on August 11, 2026 and pronounced on September 8, 2026.

An Assignment for All Foreign Countries Is Not an Assignment That Excludes India

The Court rejected the contention that an instrument covering the United States and countries foreign thereto somehow left India out. Read against the assignor's own position, the phrase was a description of worldwide reach and not a carve-out. The Court also held that the Dean, Research and Development was the competent authority under the institution's own intellectual property policy to grant the waiver, and that the assignment operated prospectively from July 3, 2017.

The practical lesson is about drafting rather than doctrine. An assignment that lists territories by exception invites precisely this dispute. Where worldwide rights are intended, the instrument should say so, and should identify the Indian application by its number.

Proof of Right Under Section 7(2) and the Limits of Section 15

Section 7(2) provides that

"Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application". Section 7(3) separately requires the application to name the person claiming to be the true and first inventor, with a declaration of belief where that person is not the applicant.

Section 15 permits the Controller to refuse an application, or to require it to be amended, where it does not comply with the Act or the rules. The Court found the refusal order to suffer from a complete non-application of mind to the merits. A written assignment was on the file. The proper course was to determine entitlement and then examine patentability, not to refuse the application on a proof of right objection that the record did not support.

Having quashed the order, the Court restored the application with Dr. Patil substituted as applicant and directed that it be decided on its substantive merits under Sections 14 and 15 within eight weeks, by a senior officer who had not previously handled the file and uninfluenced by the earlier orders. Section 14 is the provision under which the Controller communicates the gist of an adverse examination report and, if the applicant so requires, gives an opportunity of being heard.

Substitution of the Applicant Is a Statutory Function

Section 20 carries the marginal heading "Powers of Controller to make orders regarding substitution of applicants etc." and allows the Controller, on a claim made before grant, to direct that an application proceed in the name of a claimant who has acquired the applicant's interest by assignment or agreement in writing or by operation of law. The power is conditioned: where the claim rests on an assignment or agreement, the Controller may not give the direction unless the invention is identified in the instrument by reference to the application number, or the assignor acknowledges in writing that the instrument relates to that invention, or the rights have been finally established by a court, or the Controller gives directions regulating how the application is to proceed.

Shifting the applicant designation back and forth on the register without reasoned orders, as happened here, is not an exercise of that power. It is the absence of one.

Thirteen Years, and What the Court Said About It

The application had been pending for more than thirteen years of a twenty year term, through two Division Bench orders in 2024 and 2025 directing that it be heard. The Court observed that "The matter in hand borders on the tragicomic", and framed the delay as a systemic problem rather than an isolated lapse. Where the term runs from the date of filing, administrative delay is not neutral. It consumes the monopoly the statute grants.

Practice Notes

In practice, the judgment gives assignees and institutional research offices several concrete points to act on:

Draft assignments by inclusion, not exception: State that the assignment covers all territories including India, and identify each pending application by its number. Section 20 makes that identification a statutory condition of substitution, so the drafting point and the procedural point are the same point.
Check who signs: The Court upheld the Dean's authority by reference to the institution's own intellectual property policy. An assignment from an institution should be traced to the internal instrument that authorises the signatory, and that instrument should be on the file.
Do not let a proof of right objection go unanswered: Section 7(2) is satisfied by producing the instrument. Where an objection is raised, answer it with the assignment, the authority to sign and, where needed, the assignor's written acknowledgment, rather than leaving the Controller to infer entitlement.
Keep the register consistent with the entitlement: Where the applicant designation on the Patent Office record does not match the assignment, seek a reasoned order under Section 20 rather than relying on the record to correct itself.
Foreign filings do not fix the Indian position: Two United States patents in the researcher's name did not resolve the Indian application. Each jurisdiction requires its own chain of title on its own file.

Key Provisions Discussed

Section 7(2) of the Patents Act, 1970: Proof of the right to make the application where the application is made by virtue of an assignment of the right to apply.
Section 7(3) of the Patents Act, 1970: Requirement to name the true and first inventor, with a declaration where the applicant is not that person.
Section 14 of the Patents Act, 1970: Consideration of the examiner's report by the Controller, communication of objections and the opportunity of being heard.
Section 15 of the Patents Act, 1970: Power of the Controller to refuse an application or require it to be amended where it does not comply with the Act or the rules.
Section 20 of the Patents Act, 1970: Powers of the Controller to make orders regarding substitution of applicants, and the conditions attaching to a claim founded on an assignment or agreement.

Case Details

Case: Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay and Others
Case No: Commercial Miscellaneous Petition (L) No. 12000 of 2026
Citation: 2026:BHC-OS:19905
Court: High Court of Judicature at Bombay, Commercial Division
Date Reserved: August 11, 2026
Date of Judgment: September 8, 2026
Bench: Justice Somasekhar Sundaresan
Outcome: Petition allowed. The refusal order of July 17, 2025 was quashed, the application restored with the researcher substituted as applicant, and the Controller directed to decide it on the merits within eight weeks through a senior officer not previously involved.

Sources and References

Disclaimer: This article is for informational purposes only and does not constitute legal advice. Readers should consult a qualified legal professional for advice specific to their circumstances.