[This post is co-authored by Swaraj Barooah and Maneesha Gupta. Maneesha is a fifth-year B.A. LL.B. (Hons.) student at NMIMS School of Law, Bengaluru, and a participant in the SpicyIP Summer School 2026.]
A part of the Patents Act that has seen almost no litigation action till last year, has slowly started finding itself in the midst of more and more patent action. Section 3(m) (mere schemes or rules / method of performing of mental act / method of playing games) came up in a few cases last year (for instance, the MHC decision in Ab Initio Technology LLC v. Controller of Patents & Designs (here, the Court was also looking into Section 3(k) (Computer Related Inventions)) and in Robert Bosch Limited vs The Deputy Controller Of Patents). Most recently, on 4th August 2026, Justice Tushar Rao Gedela of the Delhi High Court, in T-Mobile vs CGPDTM, laid out draft guidelines for structured examination of objections under Section 3(m). The guidelines seem to have been formulated with significant input from Adarsh Ramanujan as amicus curiae, [It was nice to see the Court specifically showing appreciation to Adarsh for his assistance as Amicus here.] and are directed to be placed before the CGPDTM for taking appropriate steps within 6 weeks from the date of the receipt of the order. There are lots of things to unpack in this tightly written 10-page order and what led up to it. While we can see and appreciate what the Court has tried to do here, we use this post to point out a number of cautionary areas as well. To frontload the two central points at the crux of this post:
a) The Court appears to have declared Section 3(m) equivalent to a European provision (para. 8) that it is not actually equivalent to. And b) based on this supposed equivalence, the Court has drafted suggested guidelines for the IPO to consider, but one of the ‘distinctive’ pillars of Section 3(m) disappears from the guidelines. Let’s jump in.
Context Setting
First, a bit about the background. This case concerns a 2008 patent application 468/DELNP/2008 titled “Method and Arrangement for optimising the Operational Times and Cell Change Performance of Mobile Terminals”, which had been refused by the Patent Office in 2016, based on Sections 3(k) and 3(m). The refusal order was a brief 3-page order which stated in relevant part that as far as S.3(m) is concerned, Claims 1-17 (of 19) “recite method steps without disclosing what apparatus/structural component carried out said steps.” and hence refused the patent, based on S.3(m) (in addition to S.3(k) for separate reasons). Keep this reasoning in mind, as we’ll come back to it at the end.
| S.3 of the Patents Act: The following are not inventions within the meaning of this Act,— 3(k): a mathematical or business method or a computer programme per se or algorithms; 3(m): a mere scheme or rule or method of performing mental act or method of playing game; Relevant Parts of Article 52(2) of the European Patent Convention: The following in particular shall not be regarded as inventions within the meaning of paragraph 1: 52(2)(c): schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; 52(3): Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. |
Uncertain Origins
Before we get into the meat, first a quick curiosity about how draft/suggested guidelines came out of an appeal:
The DHC, via an order on 26 February 2026, remanded this back to the IPO for de-novo consideration. However, during the hearing of the appeal, the counsels for the parties pointed out that there were no guidelines to assist the Patent Office in evaluating 3(m) objections. Therefore, the Court retained the appeal solely to frame (suggested) administrative guidelines, citing “public interest”. While the Court is no doubt well-intended, it is unclear a) how this is a ‘public interest’ matter, and b) what this means for judicial activism/separation of powers. To be clear, the Court has not mandated that these be adopted and instead has clearly said to place it before the IPO for suitable steps to be taken. Will there now be a public consultation? Will there be a study to see how ‘troublesome’ S.3(m) interpretations are in the first place that they required this type of ‘public interest’ intervention from the Court? (considering there has been no direct litigation over it till now). Will “public interest” oriented stakeholders be called to the table? All this is to be seen over the next few months.
Not So Pari Materia
The discussion in the order starts with appreciating the legislative history of Section 3 of the Patents Act and its alignment with the Justice Ayyangar Committee report’s rationale of “precise terms inventions for which patents should be refused in the interest either of national economy or national health or well-being”.
The order goes on to interpret S. 3(m) as having four exclusions under it:
(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 first order of confusion comes in here. In para 8, the order states that the provisions of Section 3(m) are ‘pari materia’ with Article 52(2)(c) of the European Patent Convention. Now, if readers look at the relevant sections (Section 3(k) and 3(m) of the Indian Patent Act, and Article 52(2) of the EPC), it can be seen that the ‘substance’ of EPC 52(2) has been divided between Sections 3(k) and 3(m) of the Indian Patent Act. However, there are some crucial differences here. Article 52(3) limits the 52(2) exclusion to the subject matter or activities ‘as such’; and it applies this limitation to the whole of Article 52(2), i.e., mental acts, games, business methods and computer programmes.
India’s provisions do not borrow the same scope limitation in the exception. India’s laws only attach ‘per se’ to computer programmes in Section 3(k), and do not attach ‘as such’ or ‘per se’ to Section 3(m) at all. It does attach “mere” before 3 of 4 prongs of Section 3(m), which is different from both ‘per se’ and ‘as such’, and of judicially undetermined scope as far as we are aware. Considering that the Parliament had the European limitation concept available to choose from, and chose not to, it seems quite clear that it is not intended to be pari materia to EPC’s Art 52(2).
In the same context, the Indian Parliament through the Patents (Amendment) Act 2005 explicitly rejected the 2004 Ordinance which had imported the EPO’s doctrinal standard of “technical application”. The Union Minister of Commerce, Mr Kamal Nath, also gave a press note on the Patent Amendment Bill just before it was passed, stating that this rejection of the Ordinance language was intentional. Therefore, both through silence (of not utilising EPC language in Section 3(m)), and also explicit rejection (of EPO doctrinal standard), it seems the Parliament had quite clearly indicated the Indian provisions were not meant to be read pari materia to EPC’s Article 52(2).
Leaving aside legislative history, the scope issue is clear as well. Even if one believes that ‘mere’ is functionally equivalent to ‘as such’ (though there is no reason to assume that), the Court has also directly stated that ‘mere’ does not apply to the “a method of playing games” prong of S.3(m). This should mean that the Indian exception is broader than the European counterpart – and not pari materia.
Coming to the Guidelines
The (suggested) Guidelines are given as a 7-step test. From our reading of them:
- The first 3 steps set up the inquiry: Together, they establish the framework defining the scope of the claim, its nature, and the actual monopoly subject, ensuring the examiner evaluates the invention as a whole before applying the exclusion test in Step 4.
- Step 4 applies the exclusion: This is where the examiner evaluates whether the monopoly claimed is strictly a mental act in substance and nothing more than that. It also provides those exceptions that do not trigger Section 3(m)- claims that recite physical means integral to performing the method; require interaction of physical components (e.g., hardware-software interactions); or produce a tangible output or product.
- Step 5 provides a safeguard against ‘clever’ drafting: By ensuring that adding generic physical components, token post-solution steps, or naming a physical field of use cannot rescue a claim whose substance of the monopoly remains merely a mental act.
- Step 6 and 7 clarify that it is distinct from novelty and inventive step, and that any claim that recites computer implementation goes to Section 3(k) instead.
Following these steps are 6 illustrations. The first three of these are illustrations of excluded claims: The first is a mental act (sudoku puzzle by logical deduction). The second is the same mental act with the deduced solution printed on paper (token physical step). And the third is a method of evaluating and selecting arrangements in a nuclear core reactor (no integral physical steps, operative step is analytical). The next three claims are non-excluded claims: First is a claim for preheating fuel in a combustion engine using sensors, a fuel heating device, and an engine control unit (reciting physical means as integral). Next is a claim for converting information words into a modulated signal via circuits, buses, and a modulator, written into a record carrier (integral tangible components, tangible output). And finally is a claim determining a specific optimal circuit board layout, requiring a computer (to be routed to S.3(k)).
Comments / Thoughts on the Guidelines:
An important set of steps they rightly clarified: that Section 3(m) is an independent category focused on what claim monopolises- decoupling it from the requirements of novelty and inventive step (Section 2(1)(ja)). Step 6 makes sure Section 3(m) is not misused to reject a claimed invention merely because it appears to be an obvious or trivial advance. Step 7 – routing computer-implemented claims to Section 3(k), in theory, is also preferable, as Section 3(k), in theory, is supposed to be a stricter provision. However, in practice, this doesn’t resolve the bigger problem of unworthy claims seeping through the examination process, as it is seen that Section 3(k) has a lot of “technical” difficulties in interpretation already. So it’s unclear how this will play out in practice.
Notable in its absence in the 7 steps and 6 illustrations, is any mention of the 4th prong – ‘a method of playing games’, especially since the lead up to the guidelines (Para 12) explicitly discusses the Amicus’ submission that by pairing “mental acts” with “method of playing games”, the Parliament intended to exclude a genus of activities under S. 3(m).
Step 7 + Illustration 6 is also worth noting. It requires the applicant to say that a calculation or analytical method is performed ‘by a computer’ or ‘by a computer programme’, to remove it from the ambit of 3(m) and move it to be examined under 3(k). This makes sense. But when read together with Step 2, it is unclear what is left for the games prong of the section. Step 2 says a ‘product’ cannot attract Section 3(m). So, gaming apparatus, machines, board games, etc all sit outside of this. Step 7 then moves video games, fantasy sports platforms, online gaming, etc all outside of Section 3(m) as well. What is left here then? If a game requires nothing but a mental act, then it would be covered by ‘mental act’ already. Surely the games prong cannot be rendered meaningless. So it becomes unclear what the Court’s own language of pointing towards this prong to indicate a deliberate legislative choice to exclude ‘a genus of activities’, actually means now. This is particularly relevant in the context of the online gaming and fantasy sports sector.
In this context, let’s look at the Australian Aristocrat framework to see what happens when computer programmes are not routed away. Unlike India’s 3(k), Australia doesn’t have a separate computer programme exclusion. Australian Courts, for over five years, struggled to answer one question: whether feature game rules implemented through electronic gaming hardware/software are unpatentable game rules or are patentable “manner of manufacture”?- resulting in a 3:3 split verdict in the High Court ([2022] HCA 29) before culminating in the 2025 Full Federal Court decision in the Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131. Here, in Aristocrat, it was concluded that underlying game rules or abstract ideas should not be isolated from hardware, and claims must be evaluated as a whole, and when a game rule or an abstract concept is implemented through interactive physical hardware/software architecture, the claim evaluated as a whole meets the patentability threshold. Meanwhile, the Delhi High Court dodges this question by letting all disputes over online games bypass Section 3(m) and be directed to 3(k)- leaving methods of playing games practically redundant.
Step 4 is perhaps another area where others could also add their own feedback. In our reading, while independently, its two prongs are logical, together, they may possibly open the door to bypassing it with clever drafting. Step 4(a) tries to ensure that a granted claim cannot prevent someone from thinking, reasoning, calculating, judging or deciding (i.e., mental acts). Step 4(b) then provides three exceptions to Step 4(a) (and Section 3(m) as a whole), stating that it is not attracted when physical means are recited, or the claim requires interaction of physical components, or the performance of a claim results in a tangible output or product. As can be seen, it would be a trivial matter to draft a claim such that it fulfills the 4(b) exceptions, such that 4(a) doesn’t stop the application. Step 5 does try to hedge against this by saying it is insufficient that “token” additions, that are not actually “integral,” such that the “substance” of the claims remains a mental act. However, what does this actually help? It would appear, for a practical matter, that ‘token’, ‘integral’ and ‘substance’ are all terms without clear guidelines that can once again provide divergent examination outcomes. It is also unclear, when determining these terms, what role Step 3 (“Identify what is monopolised”) plays. As a minor pedantic matter, it would also be better not to use ‘monopolised’ here, as that is an economics term with a specific meaning. I.e., a patent grant does not necessarily mean one has a monopoly. “Exclusion/excluded” would be more appropriate when referring to what a patent would actually grant.
Coming Back to Where We Started
Finally, looking at this specific appeal again. What was the problem that was sought to be addressed by these guidelines? The Court does not actually state what was problematic or missing in the Controller’s order that was appealed. Rather, it states that there are no Guidelines, and thus Guidelines should be formed. But why? Does every provision require a set of Guidelines? To be clear – we are not saying guidelines are required or are not required, but rather pointing to the lack of reasoning given in the order as to why it is taking this step. Another thing is worth noting here. The order remanding the matter to the patent office was passed on February 26, wherein the Court asked the patent office to consider the matter de novo within 8 weeks. With the guidelines being passed only now (exceeding the 8-week timeframe), what was the patent office supposed to consider when the matter was remanded to it?
Also, with these guidelines in place now, as per these steps, it should bypass Section 3(m) completely and go to Section 3(k), which the Controller has already given reasoning for in its rejection order. Since there has been no discussion on Section 3(k), does this mean that the Controller can once again provide the same reasons on Section 3(k) and reject the application again? Perhaps this might be one of those rare instances where the DHC ended up missing the trees for the forest!
