T-Mobile International Ag And Co. Kg. Through Mr. Tanmay Joshi, Constituted Attorney vs The Controller Genereal Of Patents, Designs And Trademarks And Anr.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order reserved on: 23.07.2026
Order delivered on: 04.08.2026

+ C.A.(COMM.IPD-PAT) 149/2022

T-MOBILE INTERNATIONAL AG AND CO. KG. THROUGH
MR. TANMAY JOSHI, CONSTITUTED ATTORNEY ....Appellant

versus

THE CONTROLLER GENERAL OF PATENTS, DESIGNS AND
TRADEMARKS AND ANR. .....Respondent

Advocates who appeared in this case:
For the Petitioner : Mr. Vineet Rohilla, Mr. Rohit Rangi and Mr.
Tanveer Malhotra, Advocates.

For the Respondents : Dr. Monika Arora, CGSC with Mr. Subhrodeep
Saha, Ms. Animika Thakur, Advocates for R-1.

Amicus Curiae : Mr.Adarsh Ramanujan, Advocate with Parth
Singh, Advocate.

CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
O R D E R
TUSHAR RAO GEDELA , J .
1. The present appeal was filed challenging the order dated 29.12.2016
passed by the respondent in respect of a patent application No.
468/DELNP/2008, titled “ Method and Arrangement for optimising the
Operational Times and Cell Change Performance of Mobile Terminals ”
whereby the subject application was refused on the grounds under Section
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3(k) and Section 3(m) of the Patents Act, 1970 (hereinafter referred to as
‘the Act’).
2. This Court having heard the arguments of the learned counsel for the
appellant and the respondent on merits of the appeal had, vide order dated
26.02.2026, remanded the appeal for denovo consideration by the
respondent.
3. However, during the arguments it transpired and the learned counsel
had fairly submitted that there are no guidelines in respect of the manner in
which the objections under Section 3(m) of the Act, is to be ascertained and
evaluated by the Patent Office. Learned counsel for the parties sought to
assist this Court on the aforesaid issue, however, it was deemed appropriate
to request assistance of an amicus. It was on this issue that the Court
restrained the said appeal for a limited purpose in public interest.
4. In that view of the matter, this Court requested and Mr Adarsh
Ramanujan, a learned advocate and a young counsel having vast practice
and knowledge of the Patent regime, very kindly consented to assist this
Court.
5. Further upon the request of this Court, learned Amicus and learned

counsel for both parties had furnished the draft guidelines for perusal of
this Court.
6. Thereafter, the learned Amicus on 20.05.2026 has submitted an
updated Report containing suggested draft guidelines.
7. Legislatively, the 1911 Act did not contain any provision similar to
Section 3 as it exists today in the Patent Act 1970. It was in the Patents Bill
of 1953 that by way of Clause 3, “ What is not patentable ” was proposed.
Later the Justice Ayyangar Committee, re-drafted Clause 3 and was
incorporated into the Patents Act 1970. The Committee noted that such a
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clause has the purpose of codifying in “ precise terms inventions for which
patents should be refused in the interest either of national economy or
national health or well-being”. Clearly, the legislature wanted to engraft
exceptions to the patentability under the enactment. This was in the form of
exceptions carved out in various sub-sections of Section 3 of the Act.
8. Sub-section (m) to Section 3 of the Act was inserted by way of an
amendment in the year 2002. The statement of objects and reasons allude to
insertion of Section 3(m) with “international practices" and belongs to a
category which do not constitute patentable invention. This aligns with the
rationale espoused by Justice Ayyangar Committee behind insertion of
Section 3 in the Act. It should be borne in mind that provisions of Section
3(m) are “ pari materia” with Article 52(2) (c ) of the European Patent
Convention. Section 3(m) of the Act is reproduced hereunder:
“Section 3. What are not inventions.—
The following are not inventions within the meaning of this Act,—
(m) a mere scheme or rule or method of performing mental act or method of
playing game;”

9. Plainly, having regard to the use of the expression “or” between the
words mere scheme; rule; method of performing mental act and; method of
playing game , it appears that Section 3 of the Act postulates four
exceptions, i.e., (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 games.
10. It may be significant to note that the word “mere” has been used at
the commencement of the provision followed by the “act” with the word
‘or” between each of such acts suggesting disjunctionaries. Thus, it can be
safely assumed that the word “mere” would be a qualifier governing the
first three exceptions demonstrating that the exception is limited to claims
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that solely amount to a mental act and nothing more. Moreover, as against
the other exceptions contained in Section 3 as a whole, sub-section (m)
relates only to “mental” acts. In the ordinary context, “mental” act is an act
of the mind like calculation, reasoning, evaluation, cognition,
discriminative faculties, logic, judgement etc.
11. There may be situations where an invention may satisfy the
requirement under Section 2(1)(ja) of the Act, yet may not be patentable on
account of falling foul of Section 3(m). This would clearly indicate that the
exception carved out in Section 3(m) would act as an independent category
and has to be considered and dealt with as a separate and distinct objection,
not to be mixed or conflated with steps or tests of novelty and/or inventive
step. It is trite that exceptions are to be tested on their own objectivity when
examined in the backdrop of the objects and reasons for promulgation of an
enactment. Thus, the objections under sub-section (m) of Section 3 of the
Act are independent of the tests required for determining novelty and/or
inventive step and cannot be viewed with the same prism.
12. It is also relevant to examine the fourth exception - “method of
playing game”. Learned Amicus is right to submit that while playing a
game may involve something physical or tangible like a human moving a
chess piece on the chess board, the method itself for playing the game is
quite abstract. He is yet again right that Parliament by a deliberate
provision, while pairing “mental acts” with “method of playing game”
intended to exclude a genus of activities under Section 3(m). The edifice
appears to be the conundrum that abstract rules or methods operate in the
realm of logic and cognition, rather than upon physical matter. That is
precisely what the Legislature sought to resolve by exclusion.
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13. However, while applying Section 3(m), it would be relevant to focus
on the claim in the invention. One has to be careful not to dissect the claim
into its individual components while applying Section 3(m), inasmuch as
the protection conferred by the Patent Act is defined and dependent upon
the entire claim and not its individual parts.
14. At this juncture, it would be apposite to consider the judgements
rendered by this Court in the above context. In Koninklijke Philips N.V. vs.
Maj (retd) Sukech behl & Anr. : 2025 SCC Online Del 1121 held that a
method involving physical means, producing a tangible output, and
requiring technical implementation that cannot be performed mentally, falls
outside the scope of Section 3(m) of the Act. Similarly, in Lava
International Ltd. vs. Telefonaktiebolaget LM Ericsson: 2024 SCC
Online Del 2497 observed that claims involving hardware and software
components working together to measure, evaluate, signal, and control
handover parameters in a mobile radio system are beyond the scope of
mere mental acts. The Madras High Court in Robert Bosch Limited vs.
Deputy Controller of Patents and Designs in CMA(PT) 1/2024 decided on
25.03.2025 did consider a situation emanating from objections under
Section 3(m) of the Act, however did not prescribe any test or standard.
The matter was remanded for denovo consideration by the Deputy
Controller.
15. Learned Amicus had assisted this Court in bringing to its notice
judgements of EPO Boards of Appeal under Article 52(2)(c) EPC for
gauging the instructive observations rendered therein. The opinion gathered
by this Court on those decisions is as under:
“(a) In T 914/02 (General Electric), the Board held that for the exclusion to
be overcome, the claim must recite a technical implementation, resulting in
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the method providing a tangible, technical effect, such as the provision of a
physical entity or a “non-abstract activity”.

(b) In T 619/02 (Quest International) the Board held that a claim will not be
excluded where the method “involves physical activities, i.e., activities in
the physical world”, contrasting it with the “abstract nature” of mental acts
excluded by the statute. The invention was held not to be a “mental act”
even though part of the method involved a human and mental act; the
method was assessed as a whole.
(c) Although the language in T 471/05 (Philips) is less precise, the judgment
holds that what is intended to be excluded are “purely abstract and
conceptual implementations”, as opposed to a “technical activity or a
technical entity” or "physical" activity or entity”. It reiterates that a method
claim may be excluded if the method is not confined to physical, technical
implementations.”

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).
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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
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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).

Illustrations
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
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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).
A method of converting information words into a
Illustration (e)
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
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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).

17. These may be suitably placed before the Controller General of
Patents and Designs, Delhi for appropriate steps to be undertaken within a
period of 6 weeks from receipt of this order.
18. Before parting, this Court would be failing if it does not place its

deep appreciation of the time, efforts and extreme dedication of the Amicus
Curiae Mr Adarsh Ramanujan in assisting, collating and furnishing the
unbiased and practical report on the tests to determine the objections under
section 3(m) of the Act. This Court also places on record its appreciation of
the efforts invested by the able team of Mr Ramanujan. Mr Vineet Rohilla
and Mr. Subhrodeep Saha, learned counsel for the parties too assisted the
Court in formulation of points of determination and final output.
19. Since the appeal was disposed of on merits vide order dated
26.02.2026 and was kept pending only for the purposes of framing
guidelines, 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, the appeal is finally closed.



TUSHAR RAO GEDELA, J.


AUGUST 4, 2026
rl
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