Background
In T-Mobile International AG and Co. KG., the Delhi High Court, with the assistance of amicus curiae and counsel for the patent applicant and the Indian patent office, formulated certain guidelines and directed that they be placed before the controller general for appropriate next steps.
The case arose from the refusal of T-Mobile’s patent application, primarily based on the reasoning that the invention was non-patentable under sections 3(k) and 3(m) of the Patents Act, 1970. On appeal, the court found the refusal order to be erroneous and remanded the matter to the patent office for fresh examination. During the arguments, the patent applicant and the patent office agreed that currently the Indian patent office does not have clear guidelines for examining whether claims fall within the exclusions listed under Section 3(m). The court accordingly agreed to hear arguments on framing relevant guidelines.
Section 3(m) of the Patents Act states that “(m) a mere scheme or rule or method of performing [a] mental act or method of playing [a] game” is not an invention within the meaning of the act.
The court’s findings
While applying Section 3(m), the court noted that the focus should be on the entire claim rather than its individual components. The court also referred to the decisions of the EPO Boards of Appeal.
Upon consideration, the following guidelines were proposed.
Step 1: Construe the claim – a claim should be construed in light of the specification as it would be understood by a person skilled in the art.
Step 2: Product claims are not subject to Section 3(m) – a genuine product claim, such as an apparatus or device defined by its physical features, cannot be objected to under this provision.
Step 3: Identify what is monopolised – a process claim has to be read in its entirety rather than analysing if individual steps of the claim fall within Section 3(m).
Step 4: Apply the exclusion –
Examiners have to analyse whether the monopoly conferred by the claim is nothing more than a mental act. Put another way, the key question would be whether the claim, as construed, could be infringed by a person doing nothing but thinking, reasoning, calculating, judging, or deciding.
Section 3(m) would not be applicable if the claim satisfies any of the following conditions:
The claim recites physical means integral to the performance of the method;
The claim requires the interaction of physical components, including hardware operating together with software, to achieve a practical result; or
The performance of the claim results in a tangible output or product.
Step 5: Token additions – the physical means recited in claims should be integral to the performance of the claimed steps. A token or post-solution step would not be sufficient to cross the bar of Section 3(m) if the claim relates to a mental act.
Step 6: No conflation with novelty and inventive step – the inquiry under Section 3(m) is different from inquiries related to novelty and inventive step.
Step 7: Separate from Section 3(k) – if a claim recites that a method is performed by a computer or computer program, this alone is not a ground to apply Section 3(m). Such claims instead must be separately examined for patentability under Section 3(k) which states that “a mathematical or business method or a computer programme per se or algorithms” is not patentable. Inventions related to Section 3(k) are examined in accordance with the Guidelines for Examination of Computer Related Inventions (CRI), 2025.
The court also provided illustrations of claims that would and would not fall within Section 3(m).
Key takeaway
The court’s effort to prescribe structured guidelines for Section 3(m) is an encouraging development for both patent office examiners and patent applicants. The guidelines provide a clearer and more consistent framework for assessing whether a claim is merely directed to a mental act. Overall, the decision brings welcome clarity to a previously uncertain area of patent examination and should help reduce inconsistent objections under Section 3(m).
