In a significant decision for patent jurisprudence, the High Court of Delhi in T-Mobile International AG and Co. KG vs The Controller General of Patents, Designs and Trademarks and Anr. [C.A.(COMM.IPD-PAT) 149/2022; decision dated August 4, 2026] has proposed comprehensive guidelines for evaluating objections under Section 3(m) of the Patents Act, 1970.

The Court filled a long-standing gap in patent examination practice by formulating a structured 7-step test alongside practical illustrations to clarify when a claimed invention constitutes an unpatentable “mental act” versus a patentable technical contribution.

The appeal challenged the refusal of patent application number 468/DELNP/2008, entitled “Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals”. The refusal was based on the grounds of non-patentability under Section 3(k) and Section 3(m).

Although the Court had remanded the appeal on merits for de novo consideration on February 26, 2026, it retained the appeal for the purpose of public interest to establish clear principles for accessing objection raised under Section 3(m). The Court appointed Mr. Adarsh Ramanujan as Amicus Curiae, who submitted draft guidelines incorporating domestic case law as well as jurisprudence from the European Patent Office (EPO) Boards of Appeal under Article 52(2)(c) of the European Patent Convention (EPC).

Statutory Interpretation & Legislative Intent

The order highlighted several foundational aspects governing Section 3(m):

1. Legislative Origins: Section 3(m) was introduced via the 2002 Amendment to align Indian patent law with international practices (specifically Article 52(2)(c) EPC) and the rationale of the Ayyangar Committee.
2. Four Disjunctive Categories: The use of the word “or” creates four distinct exceptions:
   1. A mere scheme of performing a mental act;
   2. A mere rule of performing a mental act;
   3. A mere method of performing a mental act; and
   4. A method of playing games.
3. The Role of “Mere”: The expression “mere” acts as a qualifier for the first three categories, ensuring that the exclusion applies only to claims that amount strictly to a mental act and nothing more. For the method of playing games exception, it was noted that while playing a game often involves physical movement (such as a player physically moving a piece on a chessboard) the underlying method or rules governing the game remain purely abstract and are therefore not patentable.
4. Scope of “Mental Act”: In ordinary parlance, a mental act involves cognitive functions such as calculation, reasoning, evaluation, judgment, or discrimination.
5. No Claim Dissection: Examiners must view the claim as a whole rather than dissecting it into individual components. 
6. Analytical Independence: Section 3(m) is an independent exclusion category. It must not be conflated with the tests for novelty (Section 2(1)(j)) or inventive step (Section 2(1)(ja)). An invention may be novel and non-obvious yet still fail under Section 3(m) if its monopoly covers only a mental act.

The 7-Step Examination Framework:

The Court established a mandatory 7-step process for examining claims under Section 3(m):

Step 1: Construe the Claim

Construe each claim in light of the specification, from the perspective of a person skilled in the relevant art, without importing from the specification into the claim text.

Step 2: Product Claims Are Exempted

Genuine product claims defined by physical features are not schemes, rules, or methods and cannot be rejected under Section 3(m).

Step 3: Identify the Scope of Monopoly in Process Claims

Read the process claim as a whole and determine what it monopolizes. Do not dissect the claim into isolated steps to locate a mental act.

Step 4: Apply the Exclusion Test

Don’t ask whether the claimed method could be theoretically performed in the mind, ask whether the claim could be infringed by a person doing nothing but thinking, calculating, reasoning, judging or deciding.Section 3(m) does NOT apply if the claim recites or requires:

• Physical means integral to performing the method; or
• Hardware-software interaction achieving a practical result; or
• Performance resulting in a tangible output or product.

Step 5: Reject Token Additions

Nominal or post-solution physical steps (e.g., merely printing, displaying, or presenting results) do not protect a claim from Section 3(m) if the core monopoly remains a mental act. The physical means must be integral to, and used in, the actual performance of the claimed steps to fall outside the scope of Section 3(m).

Step 6: Maintain Separation from Novelty/Inventive Step

A claim is not barred under Section 3(m) simply because the invention seems obvious. Section 3(m) assesses what is monopolized, not whether it is novel or inventive.

Step 7: Route Computer-Implemented Claims to Section 3(k)

If a method is computer-implemented, Section 3(m) is not attracted that ground. Examiners must evaluate such claims separately under Section 3(k).

Practical Case Illustrations

To guide the Patent Office, the Court provided six scenarios illustrating the framework in practice:

• Solving a Sudoku: Solving a Sudoku puzzle purely through logical deduction is excluded under Section 3(m) because the monopoly covers logical reasoning alone.
• Solving a Sudoku and Printing it: Working out a Sudoku puzzle mentally and then printing the completed grid on paper remains excluded. The court emphasized that printing is merely a token, post-solution physical step that is not integral to the cognitive method itself.
• Identifying the Optimum Arrangement of Fuel Bundles in a Nuclear Reactor Core: A method for evaluating candidate fuel bundle arrangements in a nuclear reactor core is excluded under Section 3(m) if it relies solely on calculation and assessment. In this context, the reactor is merely the subject of analysis rather than the physical means used to carry out the method, and the process requires no actual physical loading or measurement.
• Combustion Engine Preheating: A method for preheating fuel in a combustion engine by sensing operating parameters through sensors, heating fuel with a fuel-heating device, and controlling an engine control unit is not excluded. The claim recites integral physical hardware components working together, such process is not a mental activity.
• Signal Modulation: Converting data words into a modulated signal using electronic circuits and buses, and subsequently writing that signal to a carrier, is not excluded. The process relies on tangible electronic hardware and yields a physical output.
• Circuit Layout Simulation: A computer-implemented simulation of electromagnetic interference in a circuit layout using finite-element analysis is not excluded under Section 3(m). Because performance inherently requires a computer system rather than human cognition, the Court held that such computer-implemented claims must be routed for evaluation separately under Section 3(k).

The Court directed that these guidelines be submitted to the Controller General of Patents, Designs and Trademarks within 6 weeks for appropriate administrative adoption.