Justice Tushar Rao Gedela, Delhi High Court

While closing the appeals filed against the order of the Controller General of Patents, Designs and Trademarks, the Delhi High Court has set out the guidelines for examination of claims under section 3(m) of the Patents Act, 1970 as to whether those are excluded as “a mere scheme or rule or method of performing mental act”.

The High Court was considering an appeal challenging the order passed by the respondent in respect of a patent application 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 3(k) and Section 3(m) of the Patents Act, 1970.

Setting up a 7-step test, the Single Bench of Justice Tushar Rao Gedela held, “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.”

Advocate Vineet Rohilla represented the Petitioner while Central Govt Standing Counsel represented the Respondent.

Reasoning

The Bench explained that Sub-section (m) to Section 3 of the Act was inserted by way of an amendment in the year 2002. The Bench noted that 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. The Bench further explained that Section 3 of the Act postulates four exceptions, i.e., a mere scheme of performing a mental act; a mere rule of performing a mental act; a mere method of performing a mental act; and a method of playing games.

“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 that solely amount to a mental act and nothing more”, it added.

The Bench was of the view that 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”, it stated.

The Bench thus set out the following guidelines for determining the objections under sub-section (m) of Section 3 of the Act:

  • 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.
  • 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).
  • For a process claim, identify what the claim, read as a whole, monopolises.
  • Apply the exclusion and ask whether that monopoly is nothing more than mental.
  • 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.
  • No conflation with novelty and inventive step
  • 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).

“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”, it held.

Considering that the appeal was disposed of on merits and was kept pending only for the purposes of framing guidelines, the Bench mentioned, “...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.”

Cause Title: T-Mobile International AG and Co. KG. v. The Controller General of Patents, Designs and Trademarks (Neutral Citation: 2026:DHC:6266)

Appearance

Petitioner: Advocates Vineet Rohilla, Rohit Rangi. Tanveer Malhotra

Respondent: Central Govt Standing Counsel Monika Arora, Advocates Subhrodeep Saha, Animika Thakur

Amicus Curiae: Advocates Adarsh Ramanujan, Parth Singh

Click here to read/download Order


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