On 04.08.2026 the Delhi High Court closed an appeal that had, in truth, already been decided a year earlier. In T-Mobile International AG and Co. KG v. The Controller General of Patents, Designs and Trademarks and Anr., Justice Tushar Rao Gedela had remanded T-Mobile’s patent appeal for fresh consideration back in February 2026, disposing of the underlying dispute on merits at that stage. What kept the file alive for another six months was a gap the parties themselves flagged during argument, that the Patent Office had no settled guidelines for evaluating objections raised under Section 3(m) of the Patents Act, the provision excluding mere schemes, rules, and methods of performing a mental act, along with methods of playing games, from patentability. Rather than let that gap persist, the Court appointed an amicus curiae and used the remainder of the appeal to build a structured test for examiners, applicants, and future courts to apply.
The Patent Application
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T-Mobile’s application, numbered 468/DELNP/2008 and titled Method and Arrangement for Optimising the Operational Times and Cell Change Performance of Mobile Terminals, was refused by the Controller on 29 December 2016 under both Section 3(k) and Section 3(m) of the Act. T-Mobile appealed, and after hearing arguments on the merits the Court remanded the matter for fresh consideration by order dated 26 February 2026. Ordinarily that remand would have closed the chapter, sending the application back to the Patent Office for fresh examination in light of the Court’s reasoning.
What happened instead is unusual and worth noting on its own terms. During argument, counsel for both sides candidly told the Court that no guidelines existed within the Patent Office for how a Section 3(m) objection should actually be evaluated. Examiners were, in effect, applying an exclusion with no settled methodology behind it, leaving applicants uncertain about what would or would not survive scrutiny. Rather than proceed with a remand that sent T-Mobile’s application back into that same uncertain process, the Court decided to keep the appeal alive for the narrow purpose of settling a methodology, in the public interest and beyond the specific dispute between the parties.
Building The Guidelines With An Amicus
The Court requested Mr Adarsh Ramanujan, described in the order as a young advocate with extensive knowledge of the patent regime, to assist as amicus curiae. Over the following months, the amicus and counsel for both parties furnished draft guidelines for the Court’s consideration, and on 20 May 2026 the amicus submitted an updated report containing the suggested draft. What eventually emerged in the order is substantially the product of that collaborative process, a rare instance of a court, the patent bar, and a patent applicant working together to fill a genuine regulatory gap rather than simply litigating one company’s dispute.
Section 3(m) and its Origins
Before setting out the test itself, the Court walked through the legislative history behind Section 3(m), and that history does real work in explaining why the provision exists at all. The 1911 Act contained nothing resembling the modern Section 3. The idea of listing categories of subject matter that fall outside patentability first appeared in the Patents Bill of 1953, and the Justice Ayyangar Committee later redrafted that clause into the form eventually adopted in the Patents Act of 1970. The Committee’s own explanation, that such a provision exists to codify in precise terms inventions for which patents should be refused, in the interest of the national economy or national health or well being, framed Section 3 as a deliberate legislative choice to carve exceptions out of an otherwise broad definition of what counts as an invention.
Section 3(m) itself is a comparatively recent addition, inserted only in 2002. The statement of objects and reasons tied that insertion to aligning Indian practice with international practices, and the Court noted that the provision sits pari materia with Article 52(2)(c) of the European Patent Convention, which excludes mental acts, business methods, and computer programs from patentability in broadly similar language. That parallel with European law matters later in the order, since the Court leans heavily on decisions of the EPO Boards of Appeal while constructing its own test.
Reading The Text Closely
The Court paid close attention to the actual wording of Section 3(m), which excludes a mere scheme or rule or method of performing mental act or method of playing game. Because the provision links these categories with the word or, the Court read it as creating four distinct exceptions, 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. The word mere, appearing at the start of the provision, was read as a qualifier attaching to the first three categories, meaning the exclusion applies only where the claim amounts to nothing beyond a mental act and nothing more.
The Court also stressed that Section 3(m) targets a narrow category of activity. A mental act, in ordinary usage, covers things like calculation, reasoning, evaluation, cognition, and judgement, activities that take place entirely within a person’s mind. As for the method of playing game branch, the Court accepted the amicus’s submission that although playing a game may involve physical movement, such as moving a chess piece, the method of playing itself remains abstract, operating in the realm of logic and cognition rather than upon physical matter. Parliament, in the Court’s reading, deliberately paired mental acts with methods of playing games because both share that same abstract, non physical character.
Keeping Section 3(m) Separate From Novelty And Obviousness
One of the more practically important points in the order is the Court’s insistence that a Section 3(m) objection stands entirely apart from the tests for novelty and inventive step under Sections 2(1)(j) and 2(1)(ja). An invention can satisfy those requirements and still fail under Section 3(m), because the two inquiries ask fundamentally different questions. Novelty and inventive step ask whether an invention is new and non obvious, while Section 3(m) asks whether the claim, regardless of its novelty, monopolises nothing more than an act of the mind. The Court also warned against dissecting a claim into individual components while applying Section 3(m), since patent protection attaches to the claim as a whole rather than to any single element within it.
The Seven Step Test
Drawing on its own earlier decisions in Koninklijke Philips N.V. v. Maj (Retd.) Sukesh Behl & Anr. and Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, on the Madras High Court’s decision in Robert Bosch Limited v. Deputy Controller of Patents and Designs, and on three EPO Board of Appeal rulings, the Court set out a seven step methodology for examiners to follow.
The first step requires construing the claim in light of the specification, the way a person skilled in the relevant field would understand it, without importing limitations from the specification that are not actually present in the claim language, a principle the Court traced to its own recent ruling in Canva Pty Ltd & Ors. v. Rxprism Health Systems Private Limited & Anr. The second step confirms that genuine product claims, meaning an apparatus or device defined by physical features, cannot be objected to under Section 3(m) at all, since the exclusion applies only to schemes, rules, and methods. The third step asks what a process claim, read as a whole, actually monopolises, again warning against isolating one step within a method and treating that isolated step as if it defined the entire claim.
The fourth step applies the exclusion itself, asking whether the claimed monopoly amounts to nothing more than a mental act, using a practical test of whether the claim could be infringed by someone who does nothing but think, reason, calculate, judge, or decide. Within that same step, the Court set out three circumstances in which Section 3(m) will not apply, where the claim recites physical means integral to performing the method, where it requires physical components including hardware and software working together to achieve a practical result, or where performing the claim produces a tangible output or product. The fifth step warns that a claim cannot escape Section 3(m) merely by referring to physical objects or naming a field of use, since the physical means must be integral to the actual performance of the claimed steps, and a token or post solution physical step such as displaying or printing a result will not save a claim whose substance remains a mental act.
The sixth step reiterates that the Section 3(m) inquiry has nothing to do with whether an invention is obvious or trivial, a point the Court anchored to the Supreme Court’s ruling in Novartis v. Union of India. The seventh and final step separates Section 3(m) from Section 3(k), directing that where a method is performed by a computer or computer program, that fact alone does not attract Section 3(m), and the claim should instead be examined separately under Section 3(k), the provision dealing with computer programs as such.
Illustrations That Make The Test Concrete
The Court did not leave the test as an abstract framework. It worked through six illustrations covering a method of solving a Sudoku puzzle through logical deduction, excluded because the claim monopolises pure logical deduction with nothing physical attached, the same Sudoku method with the added step of printing the solution, still excluded because printing is a token post solution activity rather than something integral to solving the puzzle, and a method of arranging fuel bundles within a nuclear reactor core, excluded because evaluating and selecting an arrangement remains an analytical exercise even though the claim mentions physical hardware, a scenario the Court traced directly to the EPO’s own General Electric decision. On the other side of the line, the Court described a method of preheating fuel in a combustion engine using sensors and a control unit, a method of converting information into a modulated signal using circuits and a modulator, and a computer implemented method of optimising a circuit board layout, all treated as falling outside Section 3(m) because each involves physical means integral to the claimed process or, in the last case, requires separate examination under Section 3(k) instead.
What Happens Next
The Court directed that the guidelines be placed before the Controller General of Patents and Designs within six weeks for appropriate action, and closed the appeal, since the underlying dispute between T-Mobile and the Patent Office had already been resolved through the February 2026 remand. Before parting, the Court recorded its appreciation for the amicus and for counsel on both sides for their assistance in shaping the final framework.
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Conclusion
This order fills a gap that Indian patent practice had lived with for far too long. Examiners issuing Section 3(m) objections and applicants trying to respond to them had no shared vocabulary or methodology to work from, which meant outcomes often turned on the instincts of an individual examiner rather than any consistent standard. A seven step test grounded in the Court’s own precedent, in a sister High Court’s approach, and in a substantial body of European jurisprudence gives both sides something concrete to argue from, and the illustrations do real work in showing how the test plays out at the margins, particularly for claims that mix analytical steps with physical components. The one caution worth flagging is that a framework this detailed will only remain useful if the Patent Office actually adopts it in practice, since guidelines issued in an appellate order carry persuasive rather than binding force over examiners applying Section 3(m) at first instance. Still, this is a rare and welcome example of a court using its appellate jurisdiction not merely to resolve one dispute but to leave behind a genuinely usable tool for the system as a whole, and applicants facing Section 3(m) objections in the years ahead will have real reason to thank both the amicus and the Bench for the effort.
Case Details: T-MOBILE INTERNATIONAL AG AND CO. KG v. THE CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS AND ANR, C.A.(COMM.IPD-PAT) 149/2022, order delivered on: 04.08.2026
