Delhi High Court Frames Guidelines To Distinguish 'Mental Acts' From Patentable Inventions

A bench of Justice Tushar Rao Gedela on August 4, 2026 clarified when a method should be considered a "mental act," which cannot be patented under Indian law and when it constitutes a technical implementation, that deserves protection under the Patents Act, 1970.

The decision followed an appeal by T-Mobile International against the 2016 refusal of its patent application for mobile terminal optimization.

The Patent Office had rejected the application on the grounds that it fell under non-patentable categories, including those related to mental acts.

During the proceedings, Justice Gedela noted that the Patent Office did not have any guidelines for evaluating these specific objections, prompting the court to appoint an Amicus Curiae, to assist in drafting a standardized framework in the public interest.

This framework is centered on Section 3(m) of the Patents Act which specifies that a "mere scheme or rule or method of performing mental act" is not an invention.

The court noted that this provision was intended to exclude activities that operate in the realm of logic and cognition rather than upon physical matter.

Under the new guidelines, a "mental act" is defined as any activity involving calculation, reasoning, evaluation, or judgment.

The new test now requires examiners to determine if a claim, when read as a whole, monopolizes nothing more than a mental process.

The guidelines provide a seven-step process for examiners:

Step 1: Construe the claim: 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.

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).

Step 3: Identify what is monopolised: For a process claim, 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: (a) Ask whether that monopoly is nothing more than a mental act. 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. (b) 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: On the other hand, 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).

To help distinguish these concepts, the court provided several illustrations. For instance, a method for solving a Sudoku puzzle via logical deduction is considered a mental act and cannot be patented, even if the final solution is printed on paper. On the other hand, a method for preheating fuel in a combustion engine that uses physical sensors and heating devices is not excluded, as it monopolizes a physical process rather than a mental activity.

The guidelines also specify that methods performed by computers should be examined under separate digital categories rather than as mental acts.

The court directed that these guiding principles be placed before the Controller General of Patents and Designs for implementation within six weeks.

For T-Mobile International: Advocates Vineet Rohilla, Rohit Rangi and Tanveer Malhotra

For Controller: CGSC Monika Arora with Advocates Subhrodeep Saha and Animika Thakur

Amicus Curiae Adarsh Ramanujan with Advocate Parth Singh