Emphasising that nominal, token, or post-solution physical steps such as displaying, presenting, or printing do not take a claim outside Section 3(m) of the Patents Act, 1970 where the substance of the monopoly, read as a whole, remains a mental act, the Delhi High Court has laid down seven-step structured test for assessing whether a claim is excluded as a “mere scheme or rule or method of performing mental act,” distinguishing mental acts from technical implementations. The guidelines were directed to be placed before the Controller General of Patents and Designs for implementation within six weeks.
These seven steps are as follows:
Step 1 — Construe the Claim: Each claim must be construed 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. The claim is the operative instrument and must be read on its own terms.
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). The exclusion operates only against process or method claims.
Step 3 — Identify What Is Monopolised: For a process claim, the examiner must 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: 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. Section 3(m) is not attracted where the claim, read as a whole, satisfies any one of the following: (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 Do Not Save a Claim: 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 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.
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), which deals specifically with computer programmes per se.
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A Single Judge Bench of Justice Tushar Rao Gedela traced the legislative history of Section 3, noting that the 1911 Act contained no equivalent provision; it was the Patents Bill of 1953 that first proposed “What is not patentable” through Clause 3, which was later re-drafted by the Justice Ayyangar Committee and incorporated into the Patents Act, 1970. The Committee observed that the purpose was to codify in precise terms inventions for which patents should be refused in the interest of national economy, national health, or well-being. Sub-section (m) to Section 3 was inserted by amendment in 2002, with the statement of objects and reasons alluding to international practices, and is pari materia with Article 52(2)(c) of the European Patent Convention.
The Court observed that Section 3(m) i.e., “a mere scheme or rule or method of performing mental act or method of playing game”, postulates four exceptions: (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. The word “mere” acts as a qualifier governing the first three exceptions, limiting them to claims that solely amount to a mental act and nothing more. The Court emphasised that a “mental” act, in the ordinary context, refers to an act of the mind such as calculation, reasoning, evaluation, cognition, discriminative faculties, logic, and judgement.
The Court made a critical observation that 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), which means the exception under Section 3(m) operates as an independent category and must be considered as a separate and distinct objection, not to be mixed or conflated with the tests of novelty and/or inventive step. The Court further noted that Parliament, by deliberately pairing “mental acts” with “method of playing game,” intended to exclude a genus of activities that operate in the realm of logic and cognition rather than upon physical matter.
The Court also cautioned that while applying Section 3(m), the focus must be on the claim as a whole and not on dissecting it into individual components, since the protection conferred by the Patent Act is defined by the entire claim and not its individual parts.
Briefly, T-Mobile International AG filed an appeal before the Delhi High Court challenging an order dated Dec 29, 2016 passed by the Controller General of Patents, Designs and Trademarks, whereby its patent application titled “Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals” was refused on grounds under Section 3(k) and Section 3(m) of the Patents Act, 1970. The Court had already remanded the appeal for denovo consideration on merits. However, during arguments, it transpired that there are no guidelines governing how objections under Section 3(m) of the Act are to be ascertained and evaluated by the Patent Office.
