Litigation by unfair surprise is out, at least for US patent PTAB cases — for European patent oppositions, not so much.
One thing that I will never forget about my experience with European patent oppositions is that to American eyes, the European process appears to be rather “due process of law” impaired.
For example, although in theory, issues should be argued in advance by written briefs, the European opposition process also allows parties to introduce new issues during the last minute oral arguments.
This allows for litigation by “unfair surprise”, rather than by reasoned arguments. In this sort of setting, I have seen that illogical but last minute “Chewbacca defenses” can work quite well. The clock is ticking, proceedings are going to finish in an hour, and suddenly you have to discuss entirely new and logically irrelevant issues. It is as if you suddenly have to shift gears and focus on if the Star Wars character Chewbacca lives on the planet Endor or not.
In this regard, it is refreshing to see that the Federal Circuit in Dell Inc., v. Acceleron, LLC (March 15, 2016) has confirmed that this sort of litigation by unfair surprise is unacceptable for US PTAB patent reviews. Due process wins — arguments made during oral argument must be restricted to only those arguments previously discussed in writing beforehand.
European software patent laws are different from the US software patent laws. In the United States, at least before “Alice” all that you had to do to overcome a “not patentable” (35 USC 101) rejection for a software patent application was to include, in the claim language, words to the effect that the invention is running on a computer processor. The actual rules and court decisions are more complex, of course, but the fact remains that including the claim limitation “processor” used to go a long way.
What about Europe? Although European Patent Convention Article 52 states that “programs for computers” are not patentable, this does not mean that an invention that uses software is not patentable. Here European Patent Office (EPO) case law shows that what the EPO looks for is proof that the invention has a “technical effect” and/or has a “technical character”. If you can show that your invention solves a technical problem, then the fact that your invention uses software does not exclude it from EPO patentability.
Of course, just as in the US, the invention will still have to satisfy a number of other stringent tests (e.g. novelty, non-obviousness) as well, but at least in Europe the “technical effect” standard gets you in the door.
Since most software based inventions have a “technical effect”, for most software applications, the “we don’t do software” hurdle will thus be relatively easy to overcome. Perhaps just as “processor” used to be the magic word for US software patent applications, “producing the technical effect of” may be the magic words for European software patent applications.