The Delhi High Court’s decision in Alcon Inc. vs Controller of Patents [C.A.(COMM.IPD-PAT) 15/2024] once again underscores an increasingly consistent judicial view that inventive step analysis under Section 2(1)(ja) cannot be a superficial mechanical exercise. It requires a disciplined, structured methodology, firmly anchored in Hoffmann-La Roche [2015 SCC OnLine Del 13619], reinforced in Tapas Chatterjee [2025 SCC OnLine Del 6369], and guided by the Supreme Court’s articulation in Novartis [(2013) 6 SCC 1].

The appeal challenged the refusal of patent application number 201914027377, entitled ‘Intraocular Lens Injector’. The subject application disclosed a device designed to improve the precision, control, and flexibility of intraocular lens implantation procedures. The Controller had rejected the application solely on the ground of lack of inventive step, concluding that the combination of two prior art documents (D1 and D5) rendered the claimed invention obvious.

It was the case of the Appellant that the teachings in D1 and D5 were fundamentally different, even mutually exclusive, driving mechanisms. They contended that D1 was centred around a threaded, screw-in piston movement and D5, on the other hand, disclosed treatment of screw-drives and telescopic drives as alternative configurations and not complementary elements to be fused into a single hybrid solution. Neither reference taught or hinted at a combination of both mechanisms within one injector.

The Appellant pointed out that the claimed invention disclosed a stationary plungerwith forward motion generated through the controlled collapse of a telescoping dual-sleeve mechanism. They argued that the Controller did not apply the five step test for obviousness laid in Hoffmann-La Roche and that the refusal was an outcome of hindsight reconstruction.

The Court held that for returning a finding under Section 2(1)(ja) of the Act, the Controller is required to:

• Examine all the elements of section 2(1)(ja) i.e. technical advance over existing knowledge, economic significance and obviousness of the claimed invention, and
• Follow the assessment test of inventive step or obviousness as prescribed by Division Bench of Delhi High Court in Hoffmann-La Roche and Tapas Chatterjee, explicitly or implicitly. The steps include: identifying an ordinary person skilled in the art (PSITA), identifying the inventive concept of the claimed invention, identifying common general knowledge, identifying the differences between the cited prior art and the claimed invention, and deciding whether those differences would have been obvious to a PSITA.

The Court noted that while the Controller had catalogued the structural features of the invention and the cited prior arts, the obviousness analysis was incomplete. The Controller’s omission of to identify the skilled person and inventive concept of the claim invention rendered the impugned order unsustainable.

The Court also reiterated the principle drawn from Crystal Crop vs Safex Chemicals wherein the Court held that identifying the inventive concept requires understanding the problem in the prior art and the manner in which the invention addresses that problem. The impugned order made no attempt to analyse the technical advancements claimed and the Controller merely relied on the broad observation that D1 and D5 lie within the same domain. This, the Court made clear, is insufficient. Domain similarity cannot substitute for a structured enquiry into whether the prior art teaches or suggests the specific technical solution embodied in the claimed injector.

In view of the foregoing, the Court set aside the impugned order and remanded the matter to the Patent Office for reconsideration.