Delhi High Court Lays Down a Seven Step Test for Mental Act Claim Objections Under Section 3(m) of the Patents Act
By SSR Patents team
The Hon’ble Delhi High Court has laid down a structured, seven step test for examining objections raised under Section 3(m) of the Patents Act, 1970, the provision that excludes a “mere scheme or rule or method of performing mental act or method of playing game” from patentability. The guidelines[1] were framed with the assistance of an amicus curiae after counsel on both sides candidly acknowledged that no settled framework existed for evaluating such objections, and have been placed before the Controller General of Patents, Designs and Trade Marks for adoption in examination practice.
For applicants and examiners alike, the guidelines fill a long standing gap. While Section 3(k), which excludes computer programmes and algorithms, has attracted substantial judicial and administrative guidance over the years, Section 3(m) had never before been the subject of a comparable analytical framework in India, leaving both refusals and grants under this ground difficult to predict.
BACKGROUND
The appeal arose out of the refusal of patent application No. 468/DELNP/2008, titled “Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals”, on the grounds available under Sections 3(k) and 3(m) of the Patents Act, 1970. The Court had earlier heard arguments on the merits of the appeal and, by an order dated 26 February 2026, remanded the matter for de novo consideration by the Controller.
During those very arguments, however, it became apparent that there were no guidelines governing the manner in which objections under Section 3(m) ought to be ascertained and evaluated by the Patent Office. Counsel for both parties fairly acknowledged the gap, and the Court, considering the issue significant enough to warrant assistance in the public interest, restrained the appeal for the limited purpose of formulating such guidelines and requested an advocate with considerable experience in patent matters to assist as amicus curiae. Both the amicus and counsel for the parties furnished draft guidelines, and the amicus submitted an updated report on 20 May 2026 containing the suggested draft that the Court has now largely adopted.
The Court traced the legislative lineage of Section 3, noting that the Patents and Designs Act, 1911 contained no equivalent provision, that a clause on “what is not patentable” was first proposed in the Patents Bill of 1953, and that the Justice Ayyangar Committee later redrafted the clause before its incorporation into the Patents Act, 1970 to codify, in the Committee’s words, precise categories of invention for which patents should be refused in the interest of the national economy, health or well being. Sub-section (m) was inserted into Section 3 by a 2002 amendment, and the Statement of Objects and Reasons ties its insertion to international practice, a lineage the Court noted is consistent with Section 3(m) being pari materia with Article 52(2)(c) of the European Patent Convention.
Section 3(m) excludes “a mere scheme or rule or method of performing mental act or method of playing game”. Parsing this language, the Court held that it postulates four distinct exceptions, namely a mere scheme, a mere rule, or a mere method of performing a mental act, and a method of playing games, and that the word “mere” qualifies the first three, limiting that part of the exclusion to claims that solely amount to a mental act, understood as an act of the mind such as calculation, reasoning, evaluation, cognition or judgement, and nothing more. The Court emphasised that this exclusion is an independent and distinct category of objection, separate from and not to be conflated with the tests for novelty or inventive step.
The Court surveyed recent decisions on the point. In Koninklijke Philips N.V. v. Maj (Retd.) Sukesh Behl[2], it was held that a method involving physical means, producing a tangible output, and requiring technical implementation that cannot be performed mentally, falls outside the scope of Section 3(m).
In Lava International Ltd. v. Telefonaktiebolaget LM Ericsson[3], it was similarly observed that claims involving hardware and software components working together to measure, evaluate, signal and control handover parameters in a mobile radio system go beyond mere mental acts.
The Madras High Court, in Robert Bosch Limited v. Deputy Controller of Patents and Designs[4], had also considered a Section 3(m) objection, though without prescribing any test or standard, and remanded the matter for de novo consideration.
The amicus additionally drew the Court’s attention to decisions of the Boards of Appeal of the European Patent Office interpreting the pari materia exclusion under Article 52(2)(c) of the European Patent Convention, which the Court found instructive.
In T 914/02 (General Electric)[5], the Board held that the exclusion is overcome only where the claim recites a technical implementation resulting in a tangible, technical effect, such as a physical entity or a non-abstract activity.
In T 619/02 (Quest International)[6], a claim was held not to be excluded where the method involves physical activities in the physical world, in contrast to the abstract nature of excluded mental acts, and the invention was held not to be a mental act even though part of the method involved a human and a mental act, since the method had to be assessed as a whole.
And in T 471/05 (Philips)[7], though its language was found to be less precise, the Board indicated that what is intended to be excluded is a purely abstract and conceptual implementation, as opposed to a technical activity, entity, or physical activity or entity, and that a method claim may be excluded if it is not confined to physical, technical implementations.
Drawing on this body of authority, the Court set out a seven step framework for examining whether a claim is excluded as a mere scheme, rule, or method of performing a mental act under Section 3(m).
Construe the claim: each claim is to be construed in light of the specification, as it would be understood by a person skilled in the relevant art, without importing limitations from the specification into the claim[8].
Product claims are not hit by Section 3(m): a claim that is, in substance, a genuine product claim, such as an apparatus or device defined by its physical features, is not a scheme, rule or method, and cannot be objected to under Section 3(m).
Identify what is monopolised: for a process claim, the examiner must identify what the claim, read as a whole, monopolises. A claimed method cannot be excluded by dissecting it into individual steps and isolating one step that involves a mental act; the protection conferred is defined by the entire claim, and the exclusion must be assessed on the claim as a whole.
Apply the exclusion: ask whether the monopoly amounts to nothing more than a mental act, applying the practical test of whether the claim could be infringed by a person doing nothing but thinking, reasoning, calculating, judging or deciding. Section 3(m) will not be attracted where the claim, read as a whole, recites physical means integral to the method, requires the interaction of physical components including hardware and software to achieve a practical result, or results in a tangible output or product.
Token additions: it is not enough for a claim merely to refer to physical objects or a physical field of use. The physical means must be integral to, and actually used in, the performance of the claimed steps; a nominal or token post-solution physical step, such as displaying, presenting or printing, will not take a claim outside Section 3(m) where the substance of the monopoly remains a mental act.
No conflation with novelty and inventive step: the Section 3(m) inquiry is directed solely at what the claim monopolises, and is independent of the novelty and inventive step requirements; a claim is not excluded under Section 3 merely because the invention appears to be an obvious or trivial advance[9].
Separate from Section 3(k): where a claim recites that the method is performed by a computer or computer programme, Section 3(m) is not attracted on that ground alone, and the claim must instead be separately examined under Section 3(k).
The guidelines are accompanied by six worked illustrations, summarised below, that trace the line between claims that monopolise a mental act and claims that are anchored in physical or technical implementation.
amendments within 15 days
Illustration
Claim Summary
Outcome under Section 3(m)
a.
Solving a Sudoku puzzle by logical deduction, with no physical means, apparatus, computer or tangible output recited.
Excluded: the monopoly is entirely an act of the mind.
b.
Same as (a), with the deduced solution additionally printed on paper.
Excluded: printing is a mere token, post-solution step.
c.
Identifying the optimum arrangement of fuel bundles in a nuclear reactor core by evaluating and selecting among candidate arrangements.
Excluded: the operative steps are analytical, with no physical loading, measurement or apparatus required.
d.
Preheating fuel in a combustion engine using sensors, a fuel heating device, and an engine control unit.
Not excluded: physical means are integral to a method that physically heats fuel and controls an engine.
e.
Converting information words into a modulated signal via circuits, a bus and a modulator, and writing the signal onto a record carrier.
Not excluded: tangible components are integral, producing a tangible output.
f.
Determining an optimal circuit board layout using a computer that simulates electromagnetic interference by finite element analysis to produce a layout file.
Not excluded under Section 3(m), since the claim requires a computer; to be separately examined under Section 3(k).
For Patent Applicants and Drafters
Draft process claims so that physical means, such as sensors, hardware components, or apparatus, are integral to the performance of the claimed steps, rather than appearing only as a nominal field of use or a token post-solution step.
Where a claim genuinely defines a product, such as an apparatus or device by its physical features, it should not attract a Section 3(m) objection at all, and any such objection should be resisted on that basis.
For Practitioners Responding to Objections and Refusals
Test a Section 3(m) objection against the claim as a whole rather than against an isolated step; an objection that rests on dissecting the claim to find one mental act step is vulnerable under these guidelines.
Keep a Section 3(m) objection analytically separate from objections on novelty, inventive step, or Section 3(k), since conflating these distinct enquiries is now expressly disapproved.
By furnishing the Patent Office with a structured, step wise methodology, supported by worked illustrations spanning both plainly excluded and plainly patentable claims, the decision brings a measure of predictability to an area of patent examination that has long lacked it. Applicants prosecuting mobile communications, computer implemented, and other process based inventions in India would do well to test their claims against this framework before filing, and to invoke it directly in responding to any objection raised under Section 3(m) of the Patents Act, 1970.
[1] T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks & Anr., C.A.(COMM.IPD-PAT) 149/2022, High Court of Delhi, order dated 4 August 2026 (Tushar Rao Gedela, J.), 2026:DHC:6266.
[2] 2025 SCC OnLine Del 1121.
[3] 2024 SCC OnLine Del 2497.
[4] CMA(PT) 1/2024, High Court of Madras, order dated 25 March 2025.
[5] T 914/02, Technical Board of Appeal, European Patent Office.
[6] T 619/02, Technical Board of Appeal, European Patent Office.
[7] T 471/05, Technical Board of Appeal, European Patent Office.
[8] Canva Pty Ltd & Ors. v. Rxprism Health Systems Private Limited & Anr., 2026:DHC:659-DB, paras 105-111.
[9] Novartis AG v. Union of India, (2013) 6 SCC 1, paras 77, 83-87.
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