Section 3(m) of the Patents Act, 1970 excludes “a mere scheme or rule or method of performing mental act or method of playing game” from patentability. The provision is intended to prevent monopolisation of subject matter that exists only as an abstract rule, scheme or act of the mind, without any technical application or practical implementation. However, the exclusion cannot be applied merely because a claim involves reasoning, calculation, selection or decision-making at some stage. The real inquiry is whether the claim, read as a whole, monopolises nothing more than a mental act, or whether it involves technical means, physical components, tangible output or a practical process that takes it outside the scope of Section 3(m).
In T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks & Anr. [C.A.(COMM.IPD-PAT) 149/2022], an appeal was filed against the rejection of the patent application for ‘Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals’. In this case, the Delhi High Court took the opportunity to analyse the scope of Section 3(m). The Court examined the purpose and intent behind Section 3(m) and noted that the word “mere” has been used at the commencement of the provision. The Court observed that the use of the word “mere”, read with the disjunctive structure of the provision, indicates that the exclusion is limited to claims that solely amount to a mental act and nothing more.
The Court explained that, in the ordinary context, a “mental act” refers to an act of the mind, such as calculation, reasoning, evaluation, cognition, logic or judgment. It also held that the Controller should not conflate the inquiry under Section 3(m) with the requirements of novelty and inventive step under Sections 2(1)(j) and 2(1)(ja). The Court accordingly laid down a “seven-step” framework with illustrations to guide examination under Section 3(m).
Factual Matrix
The patent application filed by T-Mobile International AG and Co. KG was refused by the Patent Office. The applicant preferred an appeal before the Delhi High Court. The respondent had refused the patent application on the grounds under Sections 3(k) and 3(m) of the Patents Act, 1970. Vide order dated February 26, 2026, the Court remanded the matter for de novo consideration by the respondent Controller. However, since it transpired during arguments that there were no guidelines on the manner in which objections under Section 3(m) were to be ascertained and evaluated by the Patent Office, the Court retained the appeal for the limited purpose of framing such guidelines.
Court’s Opinion
After analysing legal precedents in India and Europe, the Court laid down guidelines for examination under Section 3(m) of the Patents Act, 1970. The Court directed the Patent Office to proceed in accordance with the following steps while examining whether a claim is excluded as “a mere scheme or rule or method of performing mental act” under Section 3(m).
“Step 1:
Construe the claim: Construe each claim in the 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 (See Canva Pty Ltd & Ors. vs Rxprism Health Systems Private Limited & Anr.2026:DHC:659-DB at paras 105- 111).
Step 2:
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).
Step 3: Identify what is monopolised: For a process claim, identify what the claim, read as a whole, monopolises. A claimed method shall not be excluded by dissecting the claim into its individual steps and isolating one step that involves a mental act. The protection conferred is defined by the entire claim, and the exclusion is assessed on the claim as a whole.
Step 4: Apply the exclusion:
(a) Ask whether that monopoly is nothing more than a mental act. The operative question is not whether the claimed method could theoretically be performed in the mind, but whether the claim language, and the monopoly it confers, amount to nothing more than a monopoly over a mental act. As a practical test, ask whether the claim, as construed, could be infringed by a person doing nothing but thinking, reasoning, calculating, judging or deciding. If it could, the claim monopolises a mental act and is excluded.
(b) Section 3(m) is not attracted where the claim, read as a whole, satisfies any one of the following (See, Koninklijke Philips N.V. v. Maj (Retd.) Sukesh Behl & Anr., 2025 SCC OnLine Del 1121, para 133; Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497, para 395; Robert Bosch Ltd. v. Deputy Controller of Patents & Designs, CMA(PT) 1/2024, order dated 25.03.2025, paras 5–7):
(i) the claim recites physical means integral to the performance of the method; or
(ii) the claim requires the interaction of physical components, including hardware operating together with software, to achieve a practical result; or
(iii) The performance of the claim results in a tangible output or product.
Step 5: Token additions: On the other hand, it is not sufficient that a claim refers to physical objects, or names a physical field of use. The physical means must be integral to, and used in, the actual performance of the claimed steps. A nominal, token or post-solution physical step, such as displaying, presenting or printing, shall not take a claim outside Section 3(m) where the substance of the monopoly, read as a whole, remains a mental act.
Step 6: No conflation with novelty and inventive step: The Section 3(m) inquiry is directed solely at what the claim monopolises; it is independent of the novelty and inventive-step requirements of Sections 2(1)(j) or 2(1)(ja) and must not be conflated with them. A claim is not excluded under Section 3 merely because the claimed invention appears to be an obvious or trivial advance (See, Novartis v. UOI, (2013) 6 SCC 1, paras 77,83-87).
Step 7: Separate from Section 3(k): Where the claim recites that the method is performed by a computer or computer programme, Section 3(m) is not attracted on that ground; the claim shall instead be separately examined under Section 3(k).”
Additionally, the Court provided illustrations of subject matter which is excluded under Section 3(m). The Court also provided reasons for their exclusions.
“Illustrations
Illustration (a) Sudoku puzzle: A method of solving a Sudoku puzzle by logical deduction. No physical means, apparatus, computer or tangible output is recited. Read as a whole, the monopoly extends to the logical deduction itself, which is entirely an act of the mind; the claim could be infringed by a person doing nothing but thinking. Excluded under Section 3(m).
Illustration (b) Sudoku solution printed on paper: Same as Illustration (a), with the added claim element that the solution, once deduced, is printed on paper. Although the claim now recites a physical step, that step is a mere token, post-solution activity, not integral to the performance of the method. Excluded under Section 3(m).
Illustration (c) Optimising fuel bundle arrangement: A method of identifying the optimum arrangement of fuel bundles in a nuclear reactor core, comprising evaluating candidate arrangements and selecting the arrangement that minimises a given parameter. Although the claim refers to a reactor core and to fuel bundles, the operative steps, being evaluating and selecting, are analytical steps. The claim requires no physical loading, measurement or apparatus for their performance; the reactor core is the subject of the analysis, not a means of performing it. Read as a whole, the monopoly is over an analytical exercise capable of being carried out in the mind. Excluded under Section 3(m).
(This illustration reflects the claim refused in T 914/02 (General Electric) before the EPO Boards of Appeal.)
Illustration (d) Preheating fuel in a combustion engine: A method of preheating fuel in a combustion engine, comprising sensing engine parameters by sensors, heating the fuel by a fuel-heating device, and controlling the engine by an engine control unit. Read as a whole, the claim recites physical means, such as sensors, a fuel-heating device and an engine control unit, which are integral to the performance of the method, and the method physically heats fuel and controls an engine. The monopoly extends to a physical process and monopolises no mental activity. Not excluded under Section 3(m).
Illustration (e) Converting information words into a modulated signal: A method of converting information words into a modulated signal, comprising processing the information words through circuits, buses and a modulator, and writing the modulated signal onto a record carrier. The claim recites tangible components, such as circuits, buses and a modulator, integral to its performance, and produces a tangible output, namely a signal written onto a record carrier. Read as a whole, the monopoly extends to a physical process and monopolises no mental activity. Not excluded under Section 3(m).
Illustration (f) Computer-implemented circuit-board layout: A method of determining an optimal circuit-board layout, performed by a computer programmed to simulate electromagnetic interference by finite-element analysis and to produce a layout file. Because the performance of the claimed method requires a computer, the monopoly is not over a mental act as such, and Section 3(m) is not attracted. The claim is computer-implemented; the examiner shall not dispose of it under Section 3(m) but shall separately examine it under Section 3(k). Not excluded under Section 3(m)”
Takeaways
Through this decision, the Delhi High Court has provided a structured framework for examining objections under Section 3(m) of the Patents Act, 1970. The seven-step test clarifies that the exclusion is directed only at claims which, read as a whole, monopolise nothing more than a mental act. Genuine product claims, physical processes, claims involving integral physical means, and computer-implemented claims requiring separate examination under Section 3(k) should not be rejected mechanically under Section 3(m).
The decision is significant because it separates the Section 3(m) inquiry from novelty and inventive step analysis. The Controller must first identify what the claim monopolises and then examine whether the monopoly is merely over thinking, reasoning, calculating, judging or deciding. The Court’s illustrations provide practical guidance for applying this test and are likely to assist both the Patent Office and applicants in dealing with Section 3(m) objections.
Explaining the significance of the word “mere” in Section 3(m), the Court held that the statutory bar applies only when a claim constitutes a purely mental process and nothing more. This keeps genuine product claims outside Section 3(m), while process claims must be examined as a whole to determine whether they monopolise only a mental act.
The Court directed that the guidelines may be placed before the Controller General of Patents and Designs for appropriate steps to be undertaken within 6 weeks from receipt of the order. In the words of the Court, “now that the guidelines have been finalised, with the fond hope that the aforesaid humble attempt provides the Patent Office as also the patentees some guiding principles in testing/evaluating the objections under Section 3(m) of the Patent Act, 1970”.
Author: DPS Parmar