Delhi High Court Rejects Patent Infringe-ment Claim Over Xiaomi’s “Find Device” Feature
Summary
In Conqueror Innovations Private Limited & Anr. vs. Xiaomi Technology India Private Limited, FAO(OS) (COMM) 147/2025, the Division Bench of the Delhi High Court upheld the refusal of interim injunction against Xiaomi Technology India Private Limited for alleged infringement of Indian Patent No. 244963, titled “A Communication Device Finder System”. The Court held that Xiaomi’s “Find Device” feature did not prima facie incorporate essential elements of the suit patent, particularly the claimed data reinstallation mechanism and silent automatic answering of incoming calls. The Court also found that the prolonged delay in instituting proceedings and the imminent expiry of the patent weighed against the grant of interim relief.
Facts of the Case
The Appellants instituted a suit alleging infringement of their patent relating to a system designed to locate and recover lost or stolen communication devices. The patent, originally owned by Appellant No. 2, was assigned to Appellant No. 1 in 2021. The invention was conceived following a burglary in 2004, during which Appellant No. 2 lost 152 mobile phones.
The suit patent, granted on 28 December 2010, comprised a security activation element capable of being installed non-erasable in the device’s ROM or in flash memory with an auto-reinstallation mechanism. It also contemplated a trigger mechanism enabling the device to enter an “auto-answer mode”, alongside functions such as locating the device, playing a sound and erasing data.
The Appellants alleged that Xiaomi’s smartphones and other devices incorporated the patented technology through its “Find Device” feature. After issuing legal notices in January and February 2023, the Appellants instituted proceedings seeking, inter alia, a permanent injunction and interim relief. The learned Single Judge dismissed the interim injunction applications on 4 July 2025, finding that the essential elements of the patent were not prima facie present in Xiaomi’s devices. The Court also considered the delay in instituting proceedings and the balance of convenience in Xiaomi’s favour. Aggrieved by the decision, the Appellants preferred the present appeal.
Issue before the Court
Whether Xiaomi’s “Find Device” feature prima facie infringed the essential elements of the suit patent and whether the Appellants were entitled to interim injunction, warranting interference with the learned Single Judge’s decision.
Findings of the Court
The Division Bench reiterated, relying upon Wander Ltd. v. Antox (India) Pvt. Ltd., that appellate interference with an order refusing interim injunction is warranted only where the discretion has been exercised arbitrarily, perversely or contrary to settled legal principles.
On the alleged infringement, the Court examined Elements E2 and E3 of Independent Claim 1. It held that infringement requires a prima facie demonstration that the essential elements of the patented claim are present in the allegedly infringing product.
With respect to Element E2, concerning non-erasable storage and the automatic reinstall-ation of relevant data, the Court rejected the Appellants’ contention that the mere presence of the “Find Device” feature in ROM was sufficient. The claimed mechanism contem-plated the retention of relevant data, including the message centre number, to ensure that the security activation element remained functional despite attempts to disable it. Xiaomi’s devices did not prima facie incorporate the claimed auto-reinstallation mechanism or the requisite non-erasable storage of relevant data, including the message centre number.
Regarding Element E3, the Court held that “auto-answer mode” could not be construed merely as remote activation of a device. Read in the context of the complete specification and the Appellants’ own pleadings, the feature contemplated silently answering incoming calls without the unauthorised user’s knowledge, enabling the owner to hear the surroundings of the stolen device. Since Xiaomi’s “Find Device” feature could trigger functions such as playing a sound, locking the device or erasing data, but did not perform the claimed silent auto-answer function, the Court upheld the finding that Element E3 was absent.
The Court accordingly found no error in the learned Single Judge’s conclusion that the Appellants had failed to establish a prima facie case of infringement.
The Court also considered the delay in approaching the Court. Xiaomi had been selling the relevant devices in India since 2014, whereas the suit was instituted in 2023. The Appellants’ Form 27 filed in April 2015 indicated awareness of other mobile manufacturers allegedly employing similar technology. The Court held that the prolonged delay demonstrated a lack of urgency and independently justified refusal of interim relief. Further, as the patent was due to expire on 17 October 2026, less than two months remained when the judgment was delivered. The Court found that the balance of convenience and the limited remaining patent term weighed against granting an injunction.
Held
The Delhi High Court dismissed the appeal and upheld the refusal of interim injunction against Xiaomi. It held that the Appellants had failed to establish a prima facie case of infringement and that the delay in instituting proceedings independently weighed against interim relief. The Court clarified that its observations were prima facie and would not influence the final adjudication of the suit.
Conclusion
The decision reiterates that a patent infringement claim requires a prima facie demonstration of the essential elements of the asserted claims in the allegedly infringing product. Broad functional similarities cannot substitute for specific claim limitations. The judgment also underscores that prolonged delay in seeking interim relief may weigh against an injunction, particularly where the patent is nearing expiry and the balance of convenience favours the defendant.
Calcutta High Court Upholds Interim Injunction Protecting ITC’s “Gold Flake” Against “IJM Gold Stag” Cigarettes
Summary
The Calcutta High Court, in Pravin Kumar vs. ITC Limited & Ors., upheld the interim injunction granted in favour of ITC Limited in a trade mark and trade dress dispute involving its cigarette brand “Gold Flake” and the defendants’ “IJM Gold Stag” cigarettes. The Division Bench held that the suit was maintainable despite objections concerning territorial jurisdiction and competing trade mark registrations. It further observed that the word “Gold” had prima facie acquired secondary meaning in association with ITC’s products through extensive and continuous use. The Court found sufficient similarity between the competing marks and their overall presentation to sustain the interim protection granted by the Single Judge.
Facts of the Case
ITC Limited instituted a suit alleging infringement of its registered trademarks and trade dress, along with passing off, arising from the defendants’ use of the mark “IJM Gold Stag” and its associated packaging. The Single Judge dismissed the application seeking vacation of the interim injunction and granted temporary protection in favour of ITC, primarily on the ground of passing off, while also granting relief concerning infringement.
Aggrieved by the order, Pravin Kumar, Defendant No. 1, preferred an appeal before the Division Bench. ITC also filed a cross-objection challenging the refusal of separate relief on the ground of infringement.
The appellant contended, inter alia, that the Calcutta High Court lacked territorial jurisdiction, that an infringement action could not be maintained against a registered proprietor of an identical or similar mark, and that ITC could not claim exclusivity over the word “Gold”, which had allegedly been disclaimed in certain trade mark registrations. The appellant further disputed the similarity between the competing packaging and challenged ITC’s copyright claims.
Issue before the Court
The principal issues before the Court were whether the Calcutta High Court had jurisdiction to entertain the suit; whether an infringement action could be maintained in the presence of competing trade mark registrations; whether the appellant had established a valid right to use the impugned mark; whether ITC could assert rights in the word “Gold”; and whether the competing marks and trade dress were sufficiently similar to justify interim protection against infringement and passing off.
Findings of the Court
Territorial jurisdiction and maintainability: The Court distinguished Clauses 12 and 14 of the Letters Patent, holding that Clause 12 concerns the Court’s original jurisdiction where the cause of action arises wholly or in part within its territorial limits, whereas Clause 14 concerns the joinder of distinct causes of action. Unlike Clause 12, Clause 14 does not require prior leave before the suit can be entertained or interim orders passed. The Court noted that leave under Clause 12 had been granted and that a show-cause notice under Clause 14 had been issued, which the appellant had failed to contest. It also held that Sections 134(2) of the Trade Marks Act, 1999 and 62(2) of the Copyright Act, 1957 supported jurisdiction, given ITC’s registered head office in Kolkata.
Competing registrations and alleged licence: The Court clarified that Sections 28 to 30 of the Trade Marks Act do not, by themselves, bar the institution of a suit or the grant of interlocutory relief where the validity of a competing registration is disputed. Section 124 permits such disputes to be addressed through rectification proceedings while preserving the Court’s power to grant interim protection under Section 124(5). The Court also found substantial questions concerning the validity of the appellant’s claimed permitted use, including inconsistencies in the licence documents, the timing of the alleged permission and the supporting royalty records.
Rights in the word “Gold”: The Court held that the alleged disclaimer did not conclusively defeat ITC’s claim at the interim stage. It noted that the disclaimer appeared in relation to only one registration, while other registrations did not contain the same restriction. Considering ITC’s pleaded history of extensive and continuous use since 1905, together with previous judicial recognition of the mark’s association with ITC, the Court found a prima facie case that “Gold” had acquired secondary meaning in relation to its products.
Similarity and likelihood of confusion: The Court rejected the argument that the statutory health warnings covering 85% of cigarette packaging should be excluded from the comparison. It held that the overall presentation must be considered from the perspective of an ordinary purchaser, who encounters the cigarette packet as a whole. The limited space available for the distinctive branding could heighten the likelihood of confusion. The Court found sufficient visual similarity between the competing marks and held that differences in price or individual design elements did not eliminate the possibility of deception. Accordingly, the Single Judge’s conclusion was a plausible one and disclosed no error warranting appellate interference.
Held
The Division Bench dismissed the appeal, affirming the interim injunction granted by the Single Judge. It also dismissed ITC’s cross-objection, holding that the impugned order already afforded protection in respect of infringement of its registered trademarks and trade dress. The Court found a sufficient prima facie case of infringement and passing off to justify the continuation of interim relief.
Conclusion
The decision reiterates that competing trade mark registrations do not automatically foreclose infringement proceedings where the validity of a registration is disputed, and that passing off remains independently actionable. It also underscores the importance of assessing the overall commercial impression of a product’s packaging and recognising the possibility that a common or descriptive word may acquire secondary meaning through sustained use. The findings remain at the interim stage and do not constitute a final determination of the parties’ rights after trial.
Delhi High Court Grants Ex Parte Ad Interim Injunction to IDFC First Bank Against Unauthorised Loan Settlement Services and Trademark Misuse
Summary
The Delhi High Court, in IDFC First Bank Limited v. Settlement Guru & Ors., granted an ex-parte ad interim injunction restraining the Defendants from using the Plaintiff’s registered trademarks and misleading its borrowers into breaching their loan agreements. The Court also directed the removal of identified URLs and weblinks containing the impugned content, observing that the continued availability of such material was likely to cause irreparable harm to the Bank’s goodwill, reputation and business operations.
Facts of the Case
IDFC First Bank Limited (“Plaintiff”) instituted a commercial suit alleging that the Defendants were operating social media channels and online platforms under names including “Settlement Guru”, “AHK Tips”, “Expert Loan Settlement Advice”, “Kunal Kumar Tutorial” and “Loan Wala Bishu”. According to the Plaintiff, the Defendants were offering unauthorised loan settlement services and representing that they could secure substantial reductions in the outstanding loan amounts payable by the Bank’s borrowers.
The Plaintiff alleged that the Defendants were inducing borrowers to default on their contrac-tual repayment obligations by disseminating misleading content suggesting that borrowers could avoid regular instalments and subseq-uently settle their loans at steep discounts. The impugned content allegedly included call recordings purportedly depicting conversations between the Bank’s recovery agents and borrowers, purported one-time settlement letters bearing the Bank’s marks and letterhead, and social media videos portraying the Bank as engaging in abusive or coercive recovery practices.
The Plaintiff further alleged that the Defendants were using its registered trademarks, including “IDFC First” and formative marks incorporating “IDFC” or “IDFC First”, in video titles, descriptions, tags, promotional material and other online content. Such use, it contended, falsely suggested an association, authorisation or endorsement by the Bank and amounted to trademark infringement and passing off. The Plaintiff also impleaded social media intermediaries and service providers, along with the Ministry of Electronics and Information Technology, seeking effective implementation of the reliefs claimed.
Issue before the Court
Whether the Plaintiff had established a prima facie case warranting an ex-parte ad interim injunction against the Defendants for alleged trademark infringement, passing off, misleading representations and interference with the contractual relationship between the Bank and its borrowers.
Findings of the Court
The Court observed that the Plaintiff was a Scheduled Commercial Bank with a substantial nationwide presence and that its registered trademarks were prima facie associated exclusively with the Plaintiff. The Bank’s scale of operations, including its network of 1,147 branches and service to more than five crore customers as of 31 March 2026, supported the prima facie finding that it had built substantial goodwill and reputation in the banking sector.
The Court noted that the Defendants had neither been authorised nor appointed by the Plaintiff to act as its agents, representatives or negotiators for loan settlements. Nevertheless, they were allegedly holding themselves out as capable of procuring settlements of loans advanced by the Plaintiff at substantial discounts and were displaying the Bank’s registered marks and purported settlement letters in their online content.
The Court found that the unauthorised use of the Plaintiff’s marks in the course of trade, in connection with services closely allied to banking, was likely to lead the public to believe that the Defendants’ services were authorised, sponsored by or otherwise connected with the Plaintiff. This constituted a prima facie case of trademark infringement at the interim stage.
The Court further observed that the continued availability of the impugned content could cause escalating and continuing injury to the Plaintiff’s goodwill and reputation, erode public trust and adversely affect its business operations. Having considered the submissions advanced on behalf of the Plaintiff, the Court held that a prima facie case had been made out, the balance of convenience favoured the Plaintiff, and the Plaintiff was likely to suffer irreparable harm if interim protection were denied.
Held
The Court granted an ex-parte ad interim injunction until the next date of hearing, restraining Defendants Nos. 1 to 6 and persons acting on their behalf from interfering with the Plaintiff’s business by inducing, inciting or misleading its borrowers into deliberately breaching their loan agreements, including through the unauthorised use of the Plaintiff’s registered trademarks or deceptively similar marks in videos, posts, promotional material, social media handles or other content.
The Court also directed Defendants Nos. 1 to 6, including the John Doe Defendant, to remove the impugned URLs and weblinks identified in Annexure A within 36 hours of receiving a copy of the order. In the event of non-compliance, the Plaintiff was permitted to intimate Defendant No. 8, Google LLC, which was directed to lock and suspend the identified URLs within 36 hours of receiving such intimation. A compliance affidavit was directed to be filed within six weeks.
The Plaintiff was directed to comply with Order XXXIX Rule 3 of the Code of Civil Procedure, 1908, within two weeks.
Conclusion
The order discusses the importance of protecting a bank’s trademarks and commercial reputation against unauthorised online use that may create a false impression of institutional association. By granting urgent interim relief, the Court sought to prevent the continued dissemination of allegedly misleading loan settlement content and protect the Plaintiff’s goodwill and contractual relationships pending further adjudication. The injunction is ad interim, and the allegations against the Defendants remain subject to adjudication in the suit.
Supreme Court Refers to Larger Bench the Question of Jurisdiction of Civil Judges in Trade Mark Suits Under the Commercial Courts Act
Summary
The Supreme Court, in I.S.D.S. Private Limited & Anr. v. M/s Khemka Food Products Pvt. Ltd. & Anr., referred to a Larger Bench the question of whether a notification under the Commercial Courts Act, 2015, empowering a Civil Judge (Senior Division) to function as a Commercial Court, can override the restriction under Section 134 of the Trade Marks Act, 1999, which requires specified trade mark suits to be instituted before a court not inferior to a District Court. The Court observed that intellectual property disputes constitute a category of commercial disputes, whereas the Trade Marks Act specifically prescribes the level of court competent to entertain such proceedings. Finding that the apparent conflict in judicial precedents required authoritative resolution, the Court directed that the matter be placed before the Chief Justice of India for appropriate orders.
Facts of the Case
The appeal arose from proceedings concerning the appropriate forum for instituting a commercial suit involving rights under the Trade Marks Act, 1999. The dispute raised a question regarding the effect of notifications issued under the Commercial Courts Act, 2015, constituting Civil Judges (Senior Division) as Commercial Courts.
The appellants contended that Section 134 of the Trade Marks Act specifically restricts the institution of suits seeking the reliefs covered by that provision before courts inferior to a District Court. According to them, permitting a Civil Judge (Senior Division) to exercise jurisdiction merely because the court had been notified as a Commercial Court would dilute the statutory restriction and affect the appellate remedy available to litigants.
The respondents, on the other hand, relied on the overriding effect of Section 21 of the Commercial Courts Act and argued that the later enactment, which was specifically intended to facilitate the speedy adjudication of commercial disputes, would prevail in the event of inconsistency with the earlier legislation.
Issue before the Court
The principal issue before the Supreme Court was whether the restriction under Section 134 of the Trade Marks Act, requiring specified suits to be instituted before a court not inferior to a District Court, is rendered ineffective by a notification under the Commercial Courts Act constituting a Civil Judge (Senior Division) as a Commercial Court.
Findings of the Court
The Court considered the competing submissions in light of the decisions in Kandla Export Corporation v. OCI Corporation, Fun N. Fud v GLK Associates and Jaycee Housing Private Limited v. Registrar (General), Orissa High Court.
In Kandla Export Corporation, the Supreme Court had treated the Arbitration and Conciliation Act, 1996, as a self-contained special legislation in the context of the maintainability of appeals, holding that the Commercial Courts Act could not expand the categories of appeals permitted under the Arbitration Act. Conversely, in Jaycee Housing, the Court had held that the later-enacted Commercial Courts Act prevailed in relation to the jurisdiction prescribed under certain provisions of the Arbitration Act.
The Court observed that the Commercial Courts Act deals with the broader category of commercial disputes, expressly including intellectual property disputes under Section 2(1) (c)(xvii). Trade mark disputes, therefore, constitute one category within the larger class of commercial disputes. The Court distinguished these from arbitration, which is governed by a specialised statutory framework regulating the procedure for arbitration-related proceedings.
The Court further observed that Section 21 of the Commercial Courts Act gives the legislation overriding effect only where an inconsistency exists with another law. According to the Court, Section 134 of the Trade Marks Act, which restricts the institution of specified suits before courts inferior to a District Judge, is not inconsistent with the Commercial Courts Act insofar as the latter permits the constitution of Commercial Courts at the District Judge level.
The difficulty arises where a notification designates a Civil Judge (Senior Division) as a Commercial Court. Such a notification may permit a court inferior to a District Court to entertain a trade mark suit, thereby raising a conflict between the two statutory frameworks. The Court also highlighted the anomaly that could arise where the pecuniary value of a suit determines whether it is instituted before a Civil Judge (Senior Division) or a District Court, notwithstanding the restriction under Section 134.
Held
The Supreme Court held that the apparent conflict between the decisions in Kandla Export Corporation and Jaycee Housing required resolution by a Larger Bench to ensure uniformity in the law governing the jurisdiction of Commercial Courts across States. The matter was directed to be placed before the Chief Justice of India for appropriate orders. The Commercial Suit No. 11 of 2023 pending before the Civil Judge (Senior Division)-I, Jamshedpur, was stayed.
Conclusion
The decision raises an important question concerning the interplay between the Trade Marks Act, 1999, and the Commercial Courts Act, 2015, particularly regarding the designation of courts below the District Judge level as Commercial Courts. The Larger Bench’s determination is expected to clarify whether State notifications can confer jurisdiction over specified intellectual property suits on Civil Judges (Senior Division), ensuring greater consistency in the institution and adjudication of trade mark disputes across India.
Delhi High Court Grants Ex Parte Ad Interim Injunction to JSW MG Motor India Against Fraudulent Dealership Websites, Orders Domain Suspension and Lien on Bank Funds
Summary
The Delhi High Court, in JSW MG Motor India Private Limited & Anr. v. Anant Kumar Singh & Ors., granted an ex-parte ad interim injunction restraining the Defendants from using the Plaintiffs’ “MG” trademarks, logos, website design and other branding elements to fraudulently offer dealership opportunities. The Court observed that the unauthorised use of identical marks was prima facie causing confusion and deception among members of the public, resulting in financial loss and damage to the Plaintiffs’ goodwill. In addition to directing the suspension of three impugned domain names, the Court ordered Indian Overseas Bank to mark a lien on the identified bank account to the extent of ₹14,55,700/- and directed intermediaries to disclose relevant user and account information.
Facts of the Case
JSW MG Motor India Private Limited and its parent company instituted a commercial suit alleging that certain individuals were impersonating the Plaintiffs and fraudulently offering dealership opportunities under the “MG” and “Morris Garages” brands. The Plaintiffs asserted that they were the registered proprietors of the “MG” marks in relation to automobiles and allied goods and services and had established substantial goodwill and reputation through their business operations, extensive dealership network, sales and promotional activities in India.
According to the Plaintiffs, complaints received from members of the public in May 2026 revealed that unknown individuals were using fraudulent email addresses and online platforms to solicit applications for dealerships. The Plaintiffs identified three impugned domain names:
www.mgmotordealership.net, www.mgmotorco.in and www.mgmotordealership.com.
The Plaintiffs alleged that the websites and associated online content reproduced their stylised “MG” logos, Morris Garages branding, vehicle photographs, marketing material and website design. The platforms also displayed dealership application forms seeking personal and business particulars from prospective applicants, thereby creating the impression that the dealership opportunities were being offered by or on behalf of the Plaintiffs.
The Plaintiffs further placed on record communications indicating that members of the public had been deceived into making payme-nts for purported dealership opportunities. One customer had allegedly paid ₹12,000/- as advance money. The amount was deposited into a bank account maintained with Indian Overseas Bank, with the beneficiary’s name appearing as “MG Motors”. The Plaintiffs accordingly sought urgent injunctive relief, suspension of the impugned domains, disclosure of relevant information by intermediaries and preservation of funds allegedly received through the fraudulent activities.
Issue before the Court
Whether the Plaintiffs had established a prima facie case for an ex-parte ad interim injunction against the alleged unauthorised use of their registered trademarks and copyrighted material, and whether urgent directions were warranted to suspend the impugned domain names, disclose identifying information and preserve the suspected proceeds of the alleged fraud.
Findings of the Court
The Court observed that the Plaintiffs were registered proprietors of the “MG” marks in relation to automobiles and allied goods and services and had been carrying on business in India under the Morris Garages “MG” brand since 2017. Having considered the material placed on record, the Court found that the Plaintiffs had established a prima facie case for interim protection, that the balance of convenience favoured them and that refusal of relief was likely to cause irreparable harm.
The Court noted that Defendants Nos. 1 to 3 were using identical “MG” marks and offering dealership opportunities to unsuspecting members of the public in a manner that created the impression that such opportunities were being offered by the Plaintiffs. Documents placed on record prima facie evidenced actual confusion and deception, including a payment made by a customer who believed that the dealership was being offered by or on behalf of the Plaintiffs.
The Court held that the use of the identical marks was prima facie actionable as trademark infringement under Section 29 of the Trade Marks Act, 1999. It further observed that the alleged conduct appeared intended to exploit the Plaintiffs’ established goodwill for unlawful monetary gain and prima facie amounted to passing off. The resulting confusion was also likely to dilute the distinctiveness of the “MG” marks and tarnish the reputation associated with the brand.
In view of the nature of the allegations and the material demonstrating the alleged misuse of the Plaintiffs’ branding, the Court considered it necessary to grant immediate protection and issue directions not only against the alleged infringers but also to the relevant domain name registrars, service providers and bank.
Held
The Court granted an ex-parte ad interim injunction until the next date of hearing, restraining Defendants Nos. 1 to 3 and persons acting on their behalf from using the Plaintiffs’ “MG” marks, deceptively similar website layouts, graphics, logos, images and other branding material. The restraint also covered the use of the marks in domain names, email IDs, social media handles and WhatsApp display pictures, as well as the offering of dealership or licensing services while falsely representing an association with the Plaintiffs. The restraint extended to conduct prima facie amounting to trademark infringement, copyright infringement and passing off.
The Court issued the following directions:
- Domain suspension: The concerned DNR Defendants, were directed to suspend the three impugned domains within 36 hours of receipt of the order and disclose relevant domain registration details, including payment particulars, within six
- Disclosure by intermediary: The concerned proxy registration service provider Defendant was directed to disclose available information concerning the user on whose behalf the fraudulent domain mgmotordealership.com was register-ed, including payment details, within six weeks.
- Preservation of funds: Indian Overseas Bank was directed to mark a lien on the identified bank account to the extent of ₹14,55,700/-within two weeks, until further orders, and provide available transaction history and KYC details within six
- Disclosure of subscriber information: The Department of Telecommunications was directed to provide available details, including KYC records, for the identified
- telephone numbers within four weeks. Google LLC was directed to provide available details relating to the identified email address within four
Conclusion
The order demonstrates the importance of effective judicial intervention where alleged trademark infringement is accompanied by online impersonation and financial fraud. By combining injunctive relief with domain suspe-nsion, disclosure obligations and preservation of suspected proceeds, the Court sought to protect the Plaintiffs’ intellectual property and reputation while facilitating the identification of those allegedly responsible. The findings are prima facie and the allegations remain subject to adjudication in the pending suit.
Bombay High Court Recognises Scientist as Sole Owner of Invention, Sets Aside Patent Rejection After 13-Year Dispute with IIT Bombay
Summary
The Bombay High Court, in Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay & Ors., held that Dr. Tarkeshwar Chandrakant Patil was the sole owner of an invention titled “An Apparatus and a Method for In-Vivo Power Generation”, following a worldwide Deed of Assignment executed by IIT Bombay (“IITB”) in his favour. The Court set aside the rejection of the patent application by the Deputy Controller of Patents and Designs, observing that the Patent Office had failed to properly consider the assignment and the material on record over nearly thirteen years. The Court directed that the application be restored with Dr. Patil substituted as the applicant and be decided on its merits by a different senior officer within eight weeks.
Facts of the Case
Dr. Patil joined IITB as a Research Assistant in 2008 and subsequently pursued his Ph.D. at the institution. His research concerned an apparatus and method for generating power to keep devices implanted in the human body active. The patent application was filed by IITB on 28 August 2013, naming Dr. Patil as the principal inventor, along with Prof. Siddhartha Prakash Duttagupta and Ramesh Pushpagandha as co-inventors. Dr. Patil’s corresponding applications in the United States subsequently resulted in two patents being granted exclusively in his name.
Disputes arose between Dr. Patil and IITB concerning the prosecution of the patent applications and the ownership of the underlyi-ng intellectual property. Although IITB’s Intellectual Property Policy initially vested ownership of intellectual property generated by its personnel in the institution, the Dean, Research and Development, executed a worldwide Deed of Assignment dated 3 July 2017, transferring the full right, title and interest in the invention to Dr. Patil.
Following the assignment, Dr. Patil applied to have his name substituted as the applicant in the Indian patent application. The Controller initially amended the records to reflect his name but subsequently reversed the change. After prolonged proceedings, the Deputy Controller rejected the patent application by an order dated 17 July 2025, while also dismissing Dr. Patil’s pre-grant opposition. The Controller reasoned, inter alia, that IITB had not sufficiently established ownership of the application because proof of Dr. Patil’s right in its favour had not been furnished.
Aggrieved by the rejection and the failure to recognise his ownership, Dr. Patil approached the Bombay High Court under Section 117A of the Patents Act, 1970.
Issue before the Court
Whether the Deed of Assignment executed by IITB transferred the ownership of the invention and the patent application to Dr. Patil, including in India, and whether the Controller’s handling of the proceedings and rejection of the application warranted appellate intervention.
Findings of the Court
The Court examined IITB’s Intellectual Property Policy, the Revenue Sharing Agreement executed by the inventors in December 2013 and the Deed of Assignment dated 3 July 2017. It held that Dr. Patil was bound by IITB’s Intellectual Property Policy, under which the intellectual property initially vested in IITB. However, the Policy also empowered the Dean, Research and Development, to grant waivers from its application.
The Court found that the Deed of Assignment had been executed by the competent authority following the institutional process invoked to resolve the disputes between the parties. The instrument transferred the full and exclusive right, title and interest in the invention and authorised Dr. Patil to pursue patent applications in any country in his own name. The Court rejected IITB’s contention that the assignment covered the United States and other foreign countries but excluded India, holding that such an interpretation was contrary to the clear language of the instrument.
The Court also considered the undertaking executed by Dr. Patil in favour of the Council of Scientific and Industrial Research (“CSIR”). It observed that CSIR had subsequently clarified that it had no right to interfere with the prosecution of the patent application. Accordingly, the undertaking did not detract from Dr. Patil’s ownership.
On the conduct of the Patent Office, the Court found that the Controller had failed to properly engage with the documentary evidence and the legal consequences of the assignment. The impugned order rejected Dr. Patil’s claim to ownership while simultaneously refusing to allow IITB to proceed with the application for want of proof of right. The Court considered this approach untenable, particularly when the assignment and the relevant records were available before the Controller.
he Court noted that the application had remained unresolved for nearly thirteen years, substantially delaying the availability of patent protection in India. It emphasised that the Controller was required to adjudicate the matter on its merits and could not disregard a binding assignment executed by IITB. The Court clarified, however, that its findings concerned ownership and the proper processing of the application, and did not determine whether the invention satisfied the substantive requirements for the grant of a patent.
Held
The Bombay High Court allowed the petition and declared Dr. Patil to be the sole owner of the invention and the patent application. It allowed his pre-grant opposition under Section 25(1)(a) of the Patents Act, 1970, and held that IITB’s continued pursuit of the application in its own name after 3 July 2017 was wrongful.
The Court quashed and set aside the impugned order dated 17 July 2025 and directed that the patent application be restored to the Controller’s file, with Dr. Patil substituted as the applicant in place of IITB. His applications in Form 6 and Form 13, both dated 31 October 2017, were also allowed.
The Controller was directed to consider the application on its merits under Sections 14 and 15 of the Act, after hearing Dr. Patil on the objections raised in the First Examination Report dated 25 July 2019 and any further objections, and to pass a reasoned order within eight weeks from the date of upload of the judgment.
The Controller General was requested to assign the matter to a senior officer who had not previously been associated with it. IITB was directed to cooperate and execute any documents required to give effect to the judgment. The Court expressly clarified that it had not expressed any opinion on the merits of the patent application itself.
Conclusion
The judgment highlights the binding effect of a valid assignment of intellectual property and the importance of giving effect to institutional decisions made by an authorised body. It also highlights the obligation of the Patent Office to consider the material before it and issue reasoned decisions in accordance with law. By restoring the application and prescribing a strict timeline for its reconsideration, the Court sought to ensure that the dispute over ownership would no longer obstruct the substantive examination of the invention.
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