Delhi HC Proposes Guidelines for Patent Examiners to Distinguish Mental Acts from Technical Innovations

The Delhi High Court, in T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks [C.A.(COMM.IPD-PAT) 149/2022, 2026:DHC:6266], has laid down a structured seven-step framework for patent examiners to evaluate whether a patent claim is excluded as "a mere scheme or rule or method of performing mental act" under Section 3(m) of the Patents Act, 1970. Justice Tushar Rao Gedela, sitting as a Single Bench, delivered the order on August 4, 2026, and directed that the guidelines be placed before the Controller General of Patents and Designs for appropriate administrative steps within six weeks. This is the first comprehensive examination framework for Section 3(m) in India.

Background and Context

The case arose from an appeal against the refusal of Indian patent application No. 468/DELNP/2008, titled "Method and Arrangement for Optimising the Operational Times and Cell Change Performance of Mobile Terminals," filed by T-Mobile International AG and Co. KG. The Patent Office had refused the application on dual grounds: Section 3(k), which excludes computer programmes per se, and Section 3(m), which excludes "a mere scheme or rule or method of performing mental act or method of playing game."

Section 3(m) was inserted into the Patents Act by way of an amendment in 2002. The statement of objects and reasons referred to "international practices" and categorised such subject matter as belonging to a class that does not constitute patentable invention. Despite its presence on the statute book for over two decades, the Patent Office had no structured guidelines governing how objections under this provision should be evaluated. As the parties before the Court acknowledged, this lacuna had led to inconsistent application of the provision across different patent applications.

The Court had already disposed of the appeal on merits in an earlier hearing, remanding the patent application for fresh consideration. However, recognising that the absence of guidelines extended beyond the particular case, the Court retained the matter for the limited purpose of formulating a comprehensive examination framework. Draft guidelines were prepared with the assistance of the parties and amicus curiae, Advocates Adarsh Ramanujan and Parth Singh, and were placed before the Court for finalisation.

The Seven-Step Test

The Court formulated seven sequential steps for examining claims under Section 3(m), accompanied by practical illustrations. These steps represent a holistic framework that requires examiners to read the claim as a whole rather than dissecting it into individual components.

Step 1 requires the examiner to 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.

Step 2 provides that a genuine product claim, such as an apparatus or device defined by its physical features, is not a "scheme, rule or method" and therefore cannot be objected to under Section 3(m).

Step 3 directs the examiner, for process claims, to identify what the claim, read as a whole, monopolises. The Court emphasised that a claimed method shall not be excluded "by dissecting the claim into its individual steps and isolating one step that involves a mental act."

Step 4 is the application of the exclusion itself. The examiner must ask whether the monopoly conferred by the claim amounts to nothing more than a mental act. The Court proposed a practical test: "whether the claim, as construed, could be infringed by a person doing nothing but thinking, reasoning, calculating, judging or deciding." However, the provision is not attracted where the claim recites physical means integral to performance of the method, requires interaction between physical components (including hardware and software) to achieve a practical result, or produces a tangible output.

Step 5 addresses token additions. Nominal or post-solution physical steps, such as merely displaying, presenting, or printing, do not take a claim outside Section 3(m) where the substance of the monopoly remains a mental act.

Step 6 establishes that the Section 3(m) inquiry must not be conflated with novelty and inventive step requirements under Sections 2(1)(j) or 2(1)(ja) of the Act. The Court cited the Supreme Court's ruling in Novartis v. Union of India [(2013) 6 SCC 1] to underscore that a claim is not excluded under Section 3 merely because it appears to be an obvious or trivial advance.

Step 7 addresses the boundary with 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, and the claim must instead be examined separately under Section 3(k). This distinction is particularly important given the Delhi High Court's broader trend of providing structured guidance on complex intellectual property questions, reflecting the Court's commitment to developing clear, principled frameworks across all areas of IP law.

Practical Illustrations

The Court provided six illustrations to demonstrate the application of the seven-step test, drawing in part from decisions of the European Patent Office (EPO) Boards of Appeal under Article 52(2)(c) of the European Patent Convention. A method of solving a puzzle through logical deduction alone was excluded under Section 3(m), and adding a step of printing the solution on paper did not save the claim because printing was a mere token physical step. Similarly, a method of identifying the optimum arrangement of fuel bundles in a nuclear reactor core, consisting only of evaluating and selecting steps, was excluded because the reactor core was the subject of analysis, not a means of performing it.

Conversely, a method of preheating fuel in a combustion engine using sensors, a fuel-heating device, and an engine control unit was held to be outside Section 3(m) because the physical means were integral to the method. Likewise, a method of converting information words into a modulated signal using circuits, buses, and a modulator was not excluded because it produced a tangible output written onto a record carrier. The sixth illustration addressed a computer-implemented method of determining an optimal circuit-board layout, which the Court held should be examined under Section 3(k) rather than Section 3(m).

Analysis and Implications

This ruling fills a critical gap in Indian patent examination practice. For over two decades since Section 3(m) was introduced, the Patent Office has operated without a clear framework for evaluating mental act objections. This has resulted in inconsistent decisions and uncertainty for patent applicants, particularly those filing applications in technology-intensive fields where the boundary between computational methods and abstract mental processes is often unclear.

The seven-step test provides examiners with a structured, repeatable methodology that reduces the risk of arbitrary or inconsistent application. The emphasis on reading the claim "as a whole" is particularly significant because it prevents the reductive approach of isolating a single cognitive step from a multi-step method and rejecting the entire claim on that basis. The clear separation between Section 3(m) and Section 3(k) is another important contribution, as patent applicants in software-intensive fields have frequently faced objections under both provisions simultaneously.

For companies developing technologies that straddle these categories, understanding patent boundaries is essential. Much as conducting thorough IP due diligence for M&A transactions requires careful analysis of patent validity under the applicable statutory framework, the guidelines introduced here will become a key reference point for assessing the strength of patent claims in technology sectors. The reliance on EPO jurisprudence is also noteworthy; while Indian patent law has developed its own exclusionary framework, the structural similarity between Section 3(m) and Article 52(2)(c) EPC provides a useful comparative reference for both the Patent Office and practitioners.

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Key Takeaways

• The Delhi High Court has formulated the first comprehensive seven-step framework for evaluating patent claims under Section 3(m) of the Patents Act, 1970, filling a gap that existed for over two decades.

• Section 3(m) must be applied to the claim as a whole; isolating a single mental step from a multi-step method does not justify exclusion.

• A claim is excluded under Section 3(m) only when its monopoly amounts to nothing more than a mental act, tested by whether it could be infringed by a person doing nothing but thinking, reasoning, calculating, judging, or deciding.

• Physical means integral to performance, interaction between physical components, or production of a tangible output can take a claim outside the exclusion.

• Token or post-solution physical steps, such as displaying, presenting, or printing, do not save a claim from the exclusion.

• The Section 3(m) inquiry must be kept separate from both novelty and inventive step analysis, and from the Section 3(k) analysis for computer programmes per se.

• The guidelines have been directed to be placed before the Controller General of Patents and Designs for administrative adoption within six weeks.

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Conclusion

The Delhi High Court's order in T-Mobile International AG and Co. KG v. The Controller General of Patents represents a landmark contribution to Indian patent examination practice. By establishing a clear, structured framework for Section 3(m), the Court has addressed a longstanding source of uncertainty for patent applicants and examiners alike. The seven-step test, accompanied by practical illustrations, provides a robust methodology that should improve consistency in patent examination while ensuring that genuine technical innovations are not improperly excluded on the basis of isolated mental steps within a broader inventive method. As the Controller General considers these guidelines for administrative adoption, practitioners would be well advised to review their patent drafting strategies to ensure that claims are structured in a manner that clearly demonstrates technical substance beyond abstract mental processes.

Case Title: T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks

Case Number: C.A.(COMM.IPD-PAT) 149/2022

Neutral Citation: 2026:DHC:6266

Bench: Justice Tushar Rao Gedela

For Petitioner: Advocates Vineet Rohilla, Rohit Rangi, and Tanveer Malhotra

For Respondent: Central Government Standing Counsel Monika Arora, Advocates Subhrodeep Saha and Animika Thakur

Amicus Curiae: Advocates Adarsh Ramanujan and Parth Singh