Delhi High Court lays down seven-step test for examining patent claims involving mental acts under Section 3(m)

The appellant challenged the order dated 29.12.2016 refusing patent application No. 468/DELNP/2008, titled “Method and Arrangement for Optimising the Operational Times and Cell Change Performance of Mobile Terminals,” under Sections 3(k) and 3(m) of the Patents Act, 1970.

The appeal was remanded for de novo consideration on merits by order dated 26.02.2026.

During the hearing, the parties acknowledged the absence of clear Patent Office guidelines for examining objections under Section 3(m).

The Court therefore retained the matter for the limited public-interest purpose of formulating such guidelines, with assistance from an appointed amicus curiae.

The amicus and counsel submitted draft guidelines, culminating in an updated report dated 20.05.2026.

Section 3(m) of the Patents Act excludes from patentability “a mere scheme or rule or method of performing mental act or method of playing game”.

The Court construed the provision as containing four disjunctive exclusions: a mere scheme, rule, or method of performing a mental act, and a method of playing a game.

The word “mere” qualifies the first three categories, limiting the exclusion to claims that amount solely to a mental act; mental acts include calculation, reasoning, evaluation, cognition, logic, judgment, and decision-making.

Section 3(m) is an independent patentability exclusion and must not be conflated with novelty or inventive step under Sections 2(1)(j) and 2(1)(ja).

The Court relied on Koninklijke Philips N.V. v. Maj. (Retd.) Sukesh Behl & Anr. , 2025 SCC OnLine Del 1121, Lava International Ltd. v. Telefonaktiebolaget LM Ericsson , 2024 SCC OnLine Del 2497, and Robert Bosch Ltd. v. Deputy Controller of Patents & Designs , CMA(PT) 1/2024, for the principle that physical or technical implementation, tangible outputs, and hardware-software interaction may take a claim outside Section 3(m).

The Court also considered the analogous exclusion under Article 52(2)(c) of the European Patent Convention and the EPO decisions in T 914/02, T 619/02, and T 471/05, which distinguish purely abstract mental activities from technical or physical implementations.

The Court held that Section 3(m) must be applied to the claim construed as a whole, in light of the specification and from the perspective of a person skilled in the art, without importing limitations from the specification.

A genuine product claim defined by physical features cannot ordinarily be treated as a scheme, rule, or method under Section 3(m).

For a process claim, the examiner must identify what the claim as a whole monopolises rather than dissecting it and isolating a single mental step.

The practical test is whether the claim could be infringed by a person doing nothing more than thinking, calculating, reasoning, evaluating, judging, or deciding; if so, the monopoly is over a mental act and is excluded.

Conversely, Section 3(m) is not attracted where the claim recites physical means integral to performance, requires interaction between physical components—including hardware and software—to achieve a practical result, or produces a tangible output.

Merely adding a nominal physical step, such as displaying, printing, or presenting the result, does not avoid the exclusion if the substantive monopoly remains mental.

Computer implementation does not itself invoke Section 3(m); such claims must instead be examined separately under Section 3(k).

The illustrations demonstrate the distinction: solving Sudoku by logical deduction is excluded, whereas a sensor-controlled physical process, signal generation through circuits, or a computer-implemented method producing a layout file is not excluded under Section 3(m), subject to examination under other statutory provisions.

It clarified that Section 3(m) operates independently of novelty and inventive step, and that computer-implemented claims should be considered separately under Section 3(k).

The guidelines were directed to be placed before the Controller General of Patents, Designs and Trademarks for appropriate action within six weeks of receipt of the order.

Since the appeal had already been disposed of on merits by order dated 26.02.2026 and remained pending only for formulation of the guidelines, the Court finally closed the appeal.