In the field of patent protection, one subject that separates software from other technologies is that software was believed by many to be un-patentable subject matter for the first several decades during which the software industry flourished. As a result, most software innovations were protected by trade secret. Patent protection and trade secret protection are inherently incompatible. Patent protection is, in essence, a negotiated exchange between the public and an inventor in which the inventor gives the public complete knowledge of the inventor's invention and, in exchange, the public gives the inventor rights to exclude others from practicing the invention for a limited period of time.
An inventor cannot keep an invention secret and obtain patent protection for the same invention and therefore must generally chose between patent protection and secrecy.
What many do not understand is that choosing to keep an invention secret rather than seeking patent protection allows another inventor to subsequently independently make the same invention and seek patent protection. If the latter inventor successfully obtains patent protection for the invention, the latter inventor can exclude the former, prior inventor from practicing the invention. In the context of software inventions, patent protection was largely ignored until relatively recently, partly because the availability of patent protection for software inventions was in doubt until relatively recently. Many developers of software chose to forego patent protection in favor of trade secret protection.
Therefore, evidence of prior use and/or knowledge of an invention, which should bar issuance of a patent, is difficult to come by in many instances. This problem can be exacerbated in industries, like the petroleum industry, in which software is not the primary product/service but is instead merely incident to the primary products/services. For example, many major oil companies develop computer software for their own internal use and benefit and have no intention of marketing such software; their primary business is petroleum exploration and acquisition. Accordingly, the idea of seeking patent protection for software developed for internal use seems divergent from the primary focus and direction of the business. The result is that techniques and processes used in the computer software may have been in use for years but publicly available evidence of such use may be particularly difficult to come by, especially for a patent examiner with limited resources.
Prior use or knowledge
Increasingly, oil companies obtain technology, such as computer software to aid in seismic data interpretation and processing, from independent vendors. As a result, much of the software technology which was traditionally viewed as merely ancillary to the primary business of exploring for oil now has real, quantifiable value. Patent protection is more aggressively sought while much of the use and knowledge which should be considered as prior art is, as a practical matter, unavailable to a patent examiner. The result is that some patents issue while they really shouldn't. However, evidence of such prior use and knowledge, if obtained, can be presented to a court during litigation and the court can declare a patent invalid and therefore, unenforceable. Evidence of prior use and/or knowledge can be obtained for example, by a litigant with a sufficiently large stake in the outcome of such litigation.
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