[The post is authored by SpicyIP intern Advika Singh Malik. Advika is a third-year law student at Symbiosis Law School, Noida. She is interested in pursuing IP and tech litigation.]
The Patent Act doesn’t mandate that a process patent must always yield a product. So it was a little surprising to see when the Indian Patent Office rejected a process patent application on this ground. Thankfully, setting the record straight the Madras High Court recently corrected this in Robert Bosch Ltd. v. Deputy Controller of Patents and Designs. Previously, the patent office had asserted that an end product is necessary for the process to get a patent, even if the subject process has industrial applicability. Setting aside the Controller’s order, the Court sent the case back for reconsideration on the grounds of inventive steps and other objections raised previously by the office.
Apart from the above issue, the judgement also dealt with Section 3(m), which prohibits patenting a method of performing a mental act or a method of playing a game. In doing so, the Court touched upon whether a process can itself be industrially applied and whether the process in question is a mere mental act or something more than that, to hold that the process contains an inventive step. The post will discuss these aspects of the order.
Industrial Applicability: When is a Method More than Just a Thought?
The principle of industrial applicability under the Indian Patents Act, 1970 mandates that a patent must disclose a practical application and commercial use. Speculative or vague uses are insufficient, which means that a thought becomes a patentable process when it has some industrial utility. This does not mean that the invention has to be commercially produced at the time of the grant of a patent. In Merck v. Glenmark (2015) the Delhi High Court has held that it is enough if the invention, as described, is capable of being commercially used in the future.
Importing the above understanding in the present case, the focus of the patent office should have been on whether the subject invention meets the criterion of industrial applicability, which is a fundamental requirement under patent law. For a process to be industrially applicable, it must consistently produce the intended technical result when implemented as described in the complete specification. If the invention, such as the “Method of Preheating and Controlling the Temperature of Fuel Injected into a Combustion Engine,” does not in fact enhance engine efficiency as claimed, then it may be considered to lack industrial applicability and therefore be non-patentable. However, it would be incorrect to deny patentability solely on the basis that the invention is a process not yielding a product (as done by the Patent Office). The proper test lies in assessing whether the process delivers a repeatable and useful technical outcome within an industry. Therefore, the question of patentability should hinge on whether the invention can be practically and effectively applied in an industrial setting-not merely on its classification as a product or process.
Interpreting Section 3(m): Distinguishing Abstract Ideas and Patentable Technical Processes
The High Court correctly observed that if the Patent Office’s Section 3(m) construction is to be accepted, all method claims will stand excluded under Section 3(m).
The same logic was used in the case of Koninklijke Philips Electronics N.V vs Maj(Retd) Sukesh Behl & Anr (2025), wherein the Patent Office’s mistake lay in its extremely wide interpretation of Section 3(m) and 3(k) of the Patents Act, by declaring the claimed invention to be simply a mathematical process or mental process, and cancelling it on the grounds of non-patentability. It failed to consider that the invention involved a series of technical steps performed by means of hardware components such as circuits, buses, and modulators, collectively providing a physical, tangible result in the shape of a modulated signal impressed onto a physical record carrier.
The Court in this case also rectified the mistake by considering that the described process was neither an abstract nor a theoretical one, nor a mathematical idea, but a practical solution to an actual problem within the field of data storage and retrieval. The Patent Office had described the invention to be a methodology that is theoretical and does not yield any products. Setting this understanding aside, the Court highlighted that the invention revealed a quantifiable technical effect and actual utility, and could not be done mentally or by mere computation. Therefore, the Court corrected the narrow approach taken by the patent office and held that the invention did not come under the exclusions provided under Section 3(m) and was, in fact, patentable.
Further, while remanding the matter back to the patent office, the High Court observed that now, after excluding objections under Section 3(m), the alleged method has to be tested on whether it has an inventive step or not.
In Bilski v. Kappos (2010) the US Supreme Court pondered whether it would be feasible to patent an approach to hedging risks associated with commodity trading. The Court made it clear that mere ideas, such as mathematical formulas or general economic approaches, are not patentable unless applied to a unique, beneficial function. The takeaway? It is not sufficient for a process to simply exist; it must do something worthwhile in the world. This strongly applies to the current case: now that the applicant’s process has been demonstrated to be more than a mere intellectual act, the next challenge is to prove that it contributes something innovative to the mix.
Beyond the Product: Recognizing the Value of Process
As said above, the patent office also erred in its decision stating that for getting a patent, a product is necessary. In Vifor v. MSN (2024), the Delhi High Court held that “The Act undoubtedly confers patent protection to both products as well as processes. This is evident not just from a plain reading of Section 48 of the Act (prescribing the rights of a patentee) but also the definition of invention in the statute.” Section 2(1) (j), which defines invention, clearly encompasses a “process” under the definition of an invention, asserting the notion that method-based claims are not automatically precluded.
The Way Forward
The case highlights the need for a clear and equitable assessment of process claims, while keeping Section 3(m) in mind. The patent office, at times, has applied various clauses of Section 3 mechanically to reject applications for process patents without appropriately scrutinizing whether the process in issue constitutes a series of technical steps resulting in concrete industrial outputs. The present case also suffers from the same problem of mechanical application of Section 3. Accordingly, the ambit of exclusions under Section 3 must be construed appropriately so that legitimate innovation in process technologies is not stifled.