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The first time this idea was good enough to copy

Cartoon illustration: a timeline with three signposts labeled September 2017, December 2017, and September 2018; the inventor in lab coat and goggles stands by the December 2017 sign, alarmed; a red arrow leaves the September 2018 sign — where a corporate figure watches through binoculars — and points back toward September 2017.
Someone caught wind — and improperly claimed an earlier priority date.

The side-story: September 2018, when someone first caught wind of the idea — before the reworded application, before the patent.

By The Inventor

Background — this is part of a series on my pro se Post Grant Review of U.S. Patent 12,460,537, the patent I believe copies my oil-well rotation-sensing work. This one is the prequel: years earlier, a different company brushed up against the idea — and this episode produced the prior-art document that matters later. New here? Start at Dispatch No. 1.

I got ripped off 4 times

So far… four times (four separate companies that I know of at least) I've felt my technology was usurped. This post is about the first time. I can't even call this one getting ripped off, but you'll see what I mean. Most of this blog (other posts) revolves around the 2nd time, but this is the first one. This one's important because it resulted in a very important prior art document. One that the examiner (for the next story) did not adequately apply as prior art.

Back story

In 2017, I filed my provisional application and then did what you're supposed to be able to do: I went blabbing all over town looking for financial backing, all while developing the product and running field tests. I was literally out in the field strapping cell phones to pumping units (I'll get to that eventually). I had filed the application, I thought I was good. Just to be double sure you understand, I filed the provisional application first, and then started talking about it.

Somewhere through the grapevine the concept reached someone who was working on a loosely related sensor. It was a completely different system but close enough to modify for my technology. They had also filed a provisional application a couple of months before mine (remember: completely different technology - that's important).

Two things you should know at this point

  • First, I don't think anything nefarious took place here. This wasn't Big Corp, it was long before that. This is a side-story that has some relevant details for that story, which I'll get to later.
  • Second, when you file a patent there are some distinct timelines:
    • If you file a provisional, you have one year to file the real application. You can add new material at that point — that's allowed — but anything new only gets the later filing date, never the provisional's earlier one. Hold onto that distinction; it turns out to be the whole ballgame later in this story.
    • The application publishes 18 months after your earliest priority date (for me, the provisional — not the later non-provisional filing).

Pre-publication is a scary time

When I caught wind of this other company, it was in that 18-month pre-publication window.† Neither of our applications was published. I saw some marketing material, but had no idea if it was a finished product. No idea if they beat me to the patent office. The problem with inventors like me is that we don't go to market until it's ready. Some folks go to market first, and figure it out later (that's probably the better approach).

† There are always exceptions to the rule. There are ways to hold off publication and to get a patent before the 18-month publication, but as you'll see in this story, there is no public comment so it doesn't matter much. ↩

Did they independently invent the same thing? Was it an idea whose time just came, and if it wasn't me, it was bound to be someone else? I didn't know and nothing was published, so I'd have to wait at least until my application published and do another thorough patent search. Note, I invented it and I filed first for the actual invention — their provisional was earlier on paper, but it didn't disclose the relevant content, so it doesn't get that early date — though I wasn't 100% sure of any of that yet at this point in the story (the initial 18-month window… this was around the summer of 2019).

It turns out, I filed first!

When I saw this other company, I severely pulled back my expenditures because I didn't know if I was going to be protected (I still naively believed a patent offered at least some protection, so I kept prosecuting the application, but the hard development work slowed to nights and weekends). When I finally found their published application, I was heartbroken. There it was: my idea, with an earlier priority date — or so the cover page made it look. I wish I had just left it there. But no, I kept reading. I found the original provisional application… the one with the earlier date. It had Nothing! None of my idea was in that original disclosure. That means they added content after my filing date.

Cartoon: an inventor in a lab coat and goggles gives a cautious thumbs-up while a grinning green virus character lurks behind a large blank gray panel beside him.
Cautiously optimistic — though trouble was lurking.

So I was good on the priority date. That's not just me being optimistic — it's the rule: under the AIA, a reference only earns its provisional's early date for what that provisional actually discloses (35 U.S.C. § 102(d)). Theirs disclosed none of this, so, as to my invention, their date was the later filing, not the provisional's. But fate wasn't done with me yet: not long after, COVID hit (see Dispatch No. 3).

No ill will

I should reiterate that I have no reason to believe this specific company did anything nefarious (I mean the company before Big Corp copied me). My application wasn't public yet, and I hadn't contacted them directly. Adding content to a non-provisional isn't exactly wrong, but it sure jammed me up later. On the surface it looked like they filed first. There's a published document with a date prior to mine. But that's …easily… cleared up, and the system ultimately worked as designed to resolve that.

The irony of inaction

Cartoon: a grinning, wild-haired scientist in a stained lab coat, goggles pushed up on his head, gestures triumphantly at a periodic table in a chemistry lab full of beakers and flasks.
It's irony, right?

Through no action on my part, the relevant claims in this other application were mysteriously withdrawn (no apparent record in the file of why). My assumption is either the applicant pulled them proactively or the examiner mentioned this on a call. Either way the system worked by preventing the claims pertaining to my technology from issuing. I wouldn't be that lucky the next time. The next time I took the appropriate action within the limited bounds of the system. When I do nothing, the system works. When I do the exact thing the system says I can do, the system completely fails (stay tuned for that story).

Just so it's clear, good examiners do good work (the story above is proof). I'm not just a whiny inventor. This part of the story shows how the system should work. Unfortunately, not all examiners do good work (the rest of the story proves that too).

Unequal & inconsistent examination

Cartoon illustration: split scene of two USPTO examiners — on the left, a calm, attentive examiner at a tidy desk reviewing papers; on the right, a frazzled examiner buried in stacks of paperwork at a chaotic desk.
Same Office, two examiners, very different work.

The big punchline here is that, in getting my own patent, I had to address this document (the one with the earlier priority date, but without the corresponding earlier disclosure) in three office actions. I finally got my examiner to accept that the earlier document didn't support any of his stated rejections because it was in fact not prior art. That was a hard fight, but the evidence was clear. Side note, I just had to deal with this same issue yet again on a divisional. That's four times I had to address something that is not prior art to me (but it sure looks like it should be, if you only look at the listed date). Big Corp — the company I'm going to talk about next — never had to deal with this document in any substantive way, even though it is clearly prior art to Big Corp's application. And for Big Corp's application, none of this priority date hair-splitting even matters: by the time Big Corp filed, this document had long since published, so it's plain, on-its-face prior art against them — no provisional analysis required. That's a problem. Unequal examination.

This is the prior art I'll reference

I just want to reiterate. My idea filtered through the grapevine, someone (probably not knowing I had filed an application) sat down and wrote it up in substantial detail. This is a highly relevant document to anyone applying for a patent on this technology. This is the "other" prior art I'm going to reference in future posts when I talk about Big Corp and how their examiner ignored the prior art. This is the document and how it came to be.

This is a very relevant document for any invention in this space. I was first, but this one is just as important as prior art to any subsequent application (i.e. to Big Corp's application).

2 documents disclose this separately!

I'll say this again because it's nuanced (but the story above shows how it happened). There are 2 completely separate documents — independent documents — that thoroughly disclose the claims in the patent this whole blog is complaining about. These documents are independent — you don't need to combine them. My own application discloses the whole invention on its own; the other document gets you there too. Neither is a partial disclosure (i.e. one that only works stitched to the other). But, the examiner ignored one, and barely grasped the other. That is a big problem and is exactly what I'll cover in future posts.

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