‘Can Thinking Get You a Patent?’ The Delhi High Court Frames a Seven-Step Test for Section 3(m)
By Lucy Rana , Renu Bala and Swaraj Singh Raghuwanshi
In T-Mobile International AG and Co. KG v. Controller General of Patents, Designs and Trademarks (C.A.(COMM.IPD-PAT) 149/2022; order delivered 4 August 2026), the Delhi High Court did something unusual for an appellate order: rather than confine itself to the four corners of the dispute before it (an appeal against the refusal, on grounds under Sections 3(k) and 3(m), of patent application No. 468/DELNP/2008 titled “Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals”) the Court used the occasion to lay down a structured, seven-step analytical framework for examining objections under Section 3(m) of the Patents Act, 1970. Section 3(m) excludes from patentability “a mere scheme or rule or method of performing mental act or method of playing game.” Noting that the parties were ad idem that no adequate judicial guidance existed on the provision, and with the assistance of an Amicus Curiae, the Court set itself the task of supplying a workable test. The resulting framework is the most doctrinally rigorous statement yet on a provision that has long troubled applicants, examiners, and courts alike in the fields of software, telecommunications, electronics, and artificial intelligence.
Two aspects of procedural posture merit note, not least because they bear on the precedential weight of what follows. First, the underlying appeal arising from the 2016 refusal of a mobile-terminal application had already been disposed of on merits and remanded for fresh consideration by an earlier order of the Court; the present order was kept alive solely to settle the guidelines, and now finally closes the matter. Second, and importantly, the Court was careful to characterise its pronouncement as guidelines to be placed before the Controller General for such steps as may be considered appropriate, framed in the hope that they would assist the Patent Office and patentees alike. The Court did not purport to amend the statute, nor to lay down a general test for patentability at large. Its exercise is properly understood as an authoritative aid to construction, persuasive in character, and one which patent examiners and the Controller General will in practice be expected to follow, rather than as a new, independently binding source of statutory law.
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The Court’s analysis proceeded from first principles of statutory construction. Section 3(m), inserted into the Act in 2002 and pari materia with Article 52(2)(c) of the European Patent Convention, was read as postulating four disjunctive exceptions, given the use of the word “or” between each limb: (i) a mere scheme of performing a mental act; (ii) a mere rule of performing a mental act; (iii) a mere method of performing a mental act; and (iv) a method of playing a game. On this construction, the mental-act qualification attaches to each of the first three limbs — scheme, rule, and method alike — rather than to “method” in isolation. The qualifying word “mere”, appearing at the commencement of the provision and read against the disjunctive “or”, was held to be a qualifier governing those first three exceptions: the exclusion is attracted only where the claim, properly construed, amounts to nothing more than a mental act, i.e. an exercise in calculation, reasoning, evaluation, cognition, discriminative faculties, logic, or judgement, unaided by anything beyond the operation of the mind.
Of particular doctrinal significance is the Court’s holding that Section 3(m) constitutes an independent and free-standing ground of objection, entirely distinct from the inquiries under Section 2(1)(j) and Section 2(1)(ja) of the Act. An invention may well satisfy the requirement of an “invention” under Section 2(1)(j) and cross the threshold of inventive step under Section 2(1)(ja), and yet still fall foul of Section 3(m); conversely, a claim’s susceptibility to a Section 3(m) objection says nothing about whether it is inventive. The two inquiries operate on different axes and must not be conflated — a caution that recurs, in terms, at Step 6 of the framework itself, where the Court expressly anchors the point in the Supreme Court’s reasoning in Novartis AG v. Union of India, (2013) 6 SCC 1.
The Court’s most consequential methodological move, however, is a reframing of the interpretive question itself. The inquiry is not whether a claim’s language happens to touch upon a mental step, but what the claim, construed as a whole and in light of the specification, actually monopolises. This marks a deliberate shift from a formal, feature-by-feature dissection of claim language to a substantive inquiry into the scope of the monopoly claimed i.e. a “claim as a whole” doctrine analogous, in spirit, to approaches adopted in comparable jurisdictions under Article 52 EPC and, in the software context, under UK and EPO case law on technical contribution.
The framework draws on the Court’s own precedents in Koninklijke Philips N.V. v. Maj (Retd.) Sukesh Behl & Anr., 2025 SCC OnLine Del 1121, and Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497, together with the Madras High Court’s decision in Robert Bosch Ltd. v. Deputy Controller of Patents & Designs, CMA(PT) 1/2024 (order dated 25.03.2025), which the Court noted had considered a Section 3(m) objection but, on remand for de novo consideration, had not itself prescribed any test or standard and on the jurisprudence of the EPO Boards of Appeal construing Article 52(2)(c) EPC.
Steps 1–2: Claim Construction, and the Product/Process Distinction
Step 1 requires that the claim be construed purposively, in light of the complete specification and as a person skilled in the art would understand it, without the illegitimate importation of limitations found only in the specification and not in the claim itself. Step 2 then draws the first bright-line distinction in the framework: a genuine product claim — an apparatus, device, or system defined by its physical structure and features — falls outside the scope of Section 3(m) altogether. The provision, on its terms, addresses schemes, rules, and methods; it has no application to a claim to a physical thing, however that thing may be operated or used.
Steps 3–4: What the Claim Monopolises, and the Operative Mental-Act Test
For process claims, Step 3 directs the examiner or court to ask what the claim, taken as a whole, monopolises: expressly rejecting an approach that dissects the claim into constituent steps in search of an isolated mental element. Step 4 then supplies the operative test itself: the touchstone is not whether the claimed method is capable, in the abstract, of being carried out mentally, but whether the scope of the monopoly, properly construed, amounts to nothing more than a mental act. The Court’s own heuristic is instructive and eminently practical:- could the claim be infringed by a person doing no more than thinking, reasoning, calculating, judging, or deciding? An affirmative answer is dispositive of exclusion. Conversely, Section 3(m) has no application where the claim recites physical means integral to performance of the method, requires the interaction of physical components, including hardware operating together with software to achieve a practical result, or where performance of the claim results in a tangible output or product.
Steps 5–7: Substance Over Form, Non-Conflation, and the Section 3(k) Boundary
Step 5 forecloses the most obvious avenue of circumvention: the mere recitation of a physical object, or confinement of the claim to a particular field of use, does not by itself save a claim whose substance remains a mental act. Nor will a token or post-solution step:- displaying, presenting, or printing a result, rescue such a claim; physical means must be integral to the actual performance of the claimed method, not merely appended to its output. Step 6, as noted, reiterates that the Section 3(m) inquiry is directed solely to the scope of the monopoly claimed, and is not to be conflated with the separate inquiries into novelty or inventive step; a claim is not excluded under Section 3(m) merely because it strikes the reader as obvious. Step 7 draws a further, and much-needed, jurisdictional line: where a claim recites that a method is performed by a computer or computer programme, that fact alone does not attract Section 3(m), the claim falls instead to be examined under the distinct computer-related-inventions regime of Section 3(k). In reaching this framework the Court also drew on three EPO Board of Appeal decisions placed before it by the Amicus: T 914/02 (General Electric), holding that the exclusion is overcome only where the claim recites a technical implementation yielding a tangible, technical effect; T 619/02 (Quest International), holding that a claim is not excluded where the method involves activities in the physical world, assessed as a whole, even if part of the method involves a human and mental act; and T 471/05 (Philips), holding that what is excluded are purely abstract and conceptual implementations, as distinct from a technical or physical activity or entity.
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The Court grounded the framework in worked hypotheticals that will likely become standard reference points in examination practice.
A method of solving a Sudoku puzzle by logical deduction is excluded: the claim monopolises an act of the mind, and the addition of a step directing that the solution be printed does not alter the substance of what is claimed.
A method of identifying the optimum arrangement of fuel bundles within a nuclear reactor core, an exercise in evaluating and selecting among possibilities is likewise excluded notwithstanding the recitation of a reactor core, because the core is merely the subject-matter upon which the mental analysis is performed, not a means by which that analysis is carried out.
The Court noted that this illustration reflects the claim refused by the EPO Boards of Appeal in T 914/02 (General Electric).
By contrast,
a method of preheating fuel in a combustion engine using sensors, a fuel-heating device, and an engine control unit falls outside Section 3(m): the physical means are integral to performance of the method, and the method operates upon and changes the physical world.
The same is true of a method of converting information into a modulated signal by means of circuits, buses, and a modulator that writes the signal onto a record carrier.
Finally, a method of determining an optimal circuit-board layout, performed by a computer, is not disposed of under Section 3(m) at all, being a computer-implemented invention, it must instead be examined under Section 3(k).
The framework’s principal contribution lies in disciplining the analysis on both sides of the examination process. It supplies applicants and examiners with a common vocabulary and a defined sequence of inquiry for Section 3(m) objections, and it states with unusual clarity what will, and will not, answer such an objection: integral physical means and tangible technical outputs will; token physical recitations and mere confinement to a field of use will not. For applicants accustomed to European practice, the Court’s express reliance on Article 52(2)(c) EPC and the jurisprudence of the EPO Boards of Appeal provides a familiar point of doctrinal orientation and should assist in aligning Indian prosecution strategy with corresponding European filings. Notably, the Court has directed that the guidelines be placed before the Controller General of Patents and Designs for appropriate steps within six weeks of receipt of the order so applicants should expect the framework to filter into examination and hearing practice at the Patent Office in the near term.
That said, the framework is an analytical tool, not a mechanical checklist. Its application to any given claim construing it correctly, identifying what it monopolises “as a whole,” distinguishing physical means that are truly integral from those that are merely recited, and correctly allocating the objection between Section 3(m) and Section 3(k) remains a matter of considerable legal judgement, turning closely on the specific claim language and the supporting specification. That is precisely the terrain on which experienced patent counsel adds value, both in original prosecution and in framing responses to First Examination Reports and hearing notices that raise Section 3(m) objections.
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