Summary
In the case of T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trade Marks and Another, the Delhi High Court laid down guidelines for determining when a patent claim falls within the exclusion for a mere scheme, rule or method of performing a mental act under Section 3(m) of the Patents Act, 1970. The Court stated that Section 3(m) must be applied to the claim as a whole and not by isolating individual mental steps. It also provided a structured seven step framework for Patent Office examination of mental act objections.
Background: Patent Application and the Mental Act Objection
T-Mobile filed Indian Patent Application No. 468/DELNP/2008 for an invention titled Method and Arrangement for Optimising the Operational Times and Cell Change Performance of Mobile Terminals. The Patent Office refused the application under Sections 3(k) and 3(m) of the Patents Act, 1970.
During the appeal, the High Court had already remanded the patent application for fresh consideration. The Court, however, found that there were no guidelines governing how the Patent Office should ascertain and evaluate an objection under Section 3(m). As the issue extended beyond the particular patent application, the Court retained the matter for the limited purpose of formulating appropriate guidelines.
Draft guidelines were placed before the Court with assistance from the parties and an amicus. The Court then considered the statutory language, Indian decisions and decisions of the European Patent Office Boards of Appeal before framing the guidelines.
Questions Before the Court on the Mental Act Exclusion
- What is the scope of the expression “a mere scheme or rule or method of performing mental act” under Section 3(m) of the Patents Act?
- Should a claim be divided into individual steps to determine whether any particular step involves a mental act?
- When do physical means, technical implementation or tangible outputs take a method outside the mental act exclusion under Section 3(m)?
- How should the mental act objection under Section 3(m) be kept separate from novelty, inventive step and objections concerning computer related inventions under Section 3(k)?
Arguments Presented on the Mental Act Guidelines
The order did not record detailed competing submissions of the parties on each proposed test. It recorded the following matters relevant to formulation of the mental act guidelines:
- The parties accepted during arguments that there were no guidelines governing the manner in which objections under Section 3(m) should be ascertained and evaluated by the Patent Office.
- The parties sought to assist the Court on the issue and subsequently furnished draft guidelines for its consideration.
- The material placed before the Court referred to decisions of the European Patent Office Boards of Appeal under Article 52(2)(c) of the European Patent Convention because of the similarity between that provision and Section 3(m).
Court’s Analysis of the Mental Act Exclusion Under Section 3(m)
The Court first considered the language of Section 3(m), which excludes “a mere scheme or rule or method of performing mental act or method of playing game.” According to the Court, the word “mere” qualified the first three categories concerning schemes, rules and methods involving mental acts. The exclusion therefore targeted claims that amounted solely to a mental act and nothing more.
The Court described a mental act as an act of the mind, including calculation, reasoning, evaluation, cognition, discriminative faculties, logic and judgment. It also treated Section 3(m) as an independent patentability exclusion. A claim could satisfy inventive step requirements and still fail under Section 3(m), and the Section 3(m) enquiry could not be mixed with novelty or inventive step analysis.
Mental Acts Must Be Assessed by Reading the Claim as a Whole
A central part of the Court’s reasoning concerned claim construction. The Court stated that a patent claim must not be dissected into separate components merely because one component involves mental activity. Patent protection depends upon the entire claim, and the Section 3(m) enquiry must therefore consider what the claim, read as a whole, monopolises.
This approach meant that the presence of reasoning, calculation or evaluation somewhere within a method did not automatically convert the entire method into a mental act.
When Is a Claim Merely a Mental Act?
For a process claim, the examiner must identify what the claim actually monopolises and ask whether that monopoly amounts to nothing more than a mental act. The Court stated that 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.
The Court then supplied a practical test: whether the claim, as construed, could be infringed by a person doing nothing but thinking, reasoning, calculating, judging or deciding. This formulation was used by the Court as a tool for identifying the substance of the claimed monopoly under Section 3(m), rather than as a discussion of patent infringement law generally.
Physical Means and the Mental Act Exclusion
The Court identified circumstances in which Section 3(m) would not apply. A claim falls outside Section 3(m) if, when read as a whole, it requires physical means integral to performance of the method, requires interaction between physical components including hardware working with software to achieve a practical result, or results in a tangible output or product.
The Court cautioned that merely mentioning a physical object or a physical field of use would not be sufficient. Similarly, a nominal or post solution physical step, such as displaying, presenting or printing, would not save a claim where the substance of the monopoly remained a mental act. The physical means must be integral to the actual performance of the claimed steps.
Computer Implemented Methods and the Mental Act Exclusion
The Court separately addressed methods performed by a computer or computer programme. It stated that Section 3(m) is not attracted merely because a claim recites that the method is performed by a computer. Such a claim must instead be examined separately under Section 3(k).
Findings on the Mental Act Guidelines
The findings of the Court are as follows:
- Each claim must first be construed in light of the specification as understood by a person skilled in the relevant art.
- A genuine product claim, such as an apparatus or device defined by physical features, cannot be objected to under Section 3(m) as a scheme, rule or method.
- A process claim must be read as a whole to determine what it monopolises.
- A claim must not be rejected merely because one of its individual steps involves mental activity.
- A claim falls within Section 3(m) where its monopoly amounts to nothing more than a mental act.
- Physical means integral to performing the method may take the claim outside Section 3(m).
- Interaction between hardware and software producing a practical result may take the claim outside Section 3(m).
- A method producing a tangible output or product may fall outside the mental act exclusion.
- Token physical additions such as merely displaying, presenting or printing do not avoid Section 3(m) where the substance of the monopoly remains a mental act.
- Section 3(m) must be considered independently from novelty and inventive step.
- Computer implemented methods must not be rejected under Section 3(m) merely because a computer performs the method. The Patent Office must separately consider Section 3(k).
- The guidelines were directed to be placed before the Controller General of Patents and Designs for appropriate steps within six weeks.
Relevant Paras: Full Paragraph 16 on the Mental Act Guidelines
Paragraph 16 of the order is reproduced below in full because it contains the complete examination framework and illustrations under Section 3(m):
16. It is in the aforesaid context that guidelines for determining the objections under sub-section (m) of Section 3 of the Act, are proposed as under:
GUIDELINES FOR EXAMINATION UNDER SECTION 3(m) OF THE PATENTS ACT, 1970
The examination of a claim as to whether it is excluded as “a mere scheme or rule or method of performing mental act” under Section 3(m) shall proceed in accordance with the following steps:
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).
Illustration (a) 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) 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) 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) 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) 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) 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).
Case Citation
T-Mobile International AG & Co. KG v. Controller General of Patents, Designs & Trademarks, C.A.(COMM.IPD-PAT) 149/2022 (Del. H.C. Aug. 4, 2026), available at Indian Kanoon (https://indiankanoon.org/doc/76391412/) (last visited Aug. 8, 2026).
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog based on user inputs and prompts.