Decides on: 04.08.2026
CORAM: HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
CIATION: C.A.(COMM.IPD-PAT) 149/2022
Introduction
In a recent judgement in the matter of T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks C.A.(COMM.IPD-PAT) 149/2022, the Delhi High Court laid down a seven step framework to determine whether patent claims falls under the exclusion of Section 3(m) of the Indian Patent Act, 1970 as “a mere scheme or rule or method of performing mental act”. The Order by the High Court directed that the Controller General of Patents and Designs must take appropriate administrative steps within six weeks from the presentation of the guidelines before them.
The matter originated as an appeal against the refusal order in respect of the patent application bearing no. 468/DELNP/2008, filed by T-Mobile International AG and Co. The patent office based their refusal of the patent application on Section 3(k) and 3(m) of the Indian Patent Act 1970. It is noteworthy that although Section 3(m) has been present in the Indian Patent Act 1970, since the 2002 amendment, up until the judgement there were no structured guidelines to evaluate the objections under section 3(m), thereby giving rise to the present matter.
Although the appeal was disposed of previously the High Court had retained the matter after considering that the absence of proper guidelines in respect of Section 3(m), extended beyond the present matter and thereby required the formulation of a comprehensive framework. This is a significant development as prior to this there did not exist a comprehensive examination framework for Section 3(m) in India, this judgement by the Delhi High Court shall set up the first comprehensive examination framework for Section 3(m) in India.
The Framework
The High court has very carefully formulated a seven step framework in respect of claims under section 3(m) of the Indian Patent Act 1970, these steps represent a holistic framework that requires examiners to read the claim as a whole rather than dissecting it into individual components.
Step 1: The Examiner should construe every single claim in respect of the specifications, in the manner a person skilled in the relevant art would, and limitation from the specifications should not be imported into the claim.
Step 2: any genuine product claim which is defined by its physical features should not be considered a “Rule, method or scheme” and therefore falls outside the purview of section (m).
Step 3: The examiner must process the claim, identify the claim and read the claim as a whole instead of dissecting the claim to isolate a single step that involves a mental act.
Step 4: The examiner must consider “whether the claim, as construed, could be infringed by a person doing nothing but thinking, reasoning, calculating, judging or deciding.” However, the provision is not attracted where the claim recites physical means integral to performance of the method, requires interaction between physical components (including hardware and software) to achieve a practical result, or produces a tangible output.
Step 5: addresses token additions. Nominal or post-solution physical steps, such as merely displaying, presenting, or printing, do not take a claim outside Section 3(m) where the substance of the monopoly remains a mental act.
Step 6: The inquiry in respect of objections under section 3(m) should not be conflated with novelty and inventive step requirements under Sections 2(1)(j) or 2(1)(ja) of the Act.
Step 7: Where a claim merely states that the method is carried out using a computer or computer programme, that fact alone does not bring the claim within Section 3(m). Instead, the claim must be independently assessed under Section 3(k) to determine whether it falls within the exclusion relating to computer-related inventions.
Conclusion
The Delhi High Court’s decision in T-Mobile International AG and Co. KG v. The Controller General of Patents is an important development in Indian patent examination practice. By laying down a clear and structured approach to Section 3(m), the Court has sought to resolve much of the uncertainty that has historically surrounded the provision for both applicants and patent examiners. The seven-step test, together with the practical examples provided by the Court, offers a useful framework for assessing claims more consistently. At the same time, it helps ensure that genuine technical inventions are not excluded merely because a broader method contains an incidental mental step. As the Controller General considers incorporating these principles into examination practice, patent practitioners should also reassess their drafting strategies and ensure that claims sufficiently demonstrate the underlying technical contribution rather than appearing to rely primarily on abstract mental processes.