SAWS Retired by USPTO

By Gene Quinn
March 2, 2015

uspto_logo-320In 1994 the United States Patent and Trademark Office (USPTO) established a program to review certain applications that were deemed to merit additional scrutiny. This program is called The Sensitive Application Warning System or SAWS for short. See An Ex-Insider’s Perspective on SAWS. Little was known about SAWS publicly, and in the absence of full disclosure the secretive nature of SAWS created much conjecture over the past several months as little by little more information came to light in the public.

Some have charged the agency with subjecting certain patent applications to unending scrutiny in a never ending examination process. See Secret Examination Procedures at the USPTO. The USPTO has been reluctant to say much about SAWS, and in fact as Freedom of Information (FOIA) Requests were filed the Office would not even tell applicants whether their applications were designated for SAWS review. See USPTO Should Release SAWS Numbers.

But today the USPTO has put SAWS to rest, literally. The USPTO has posted a message on the agency’s website explaining that after conducting an internal review of the SAWS program the agency has “decided to retire this program.” Furthermore, the USPTO explained that “[a]ny applications currently in this program will now proceed through prosecution absent any additional SAWS-related processing.”

The USPTO webpage goes on to say that the Office will “seek public input as part of its ongoing Enhanced Patent Quality Initiative on whether there were any quality-enhancing features of the SAWs program that are not already captured through the typical examination and prosecution process.” The USPTO also pledges to be more transparent moving forward, saying that “[a]ny such programs developed as part of the Quality Initiative will be disclosed to the public before implementation.”

Personally, I think the decision to retire the SAWS program shows an abundance of good faith on the part of the USPTO. I doubt that anyone would question that certain applications demand a heightened level of scrutiny, such as those that might claim the ability to travel faster than the speed of light or those that purport to define a perpetual motion machine. But it seemed that over time SAWS expanded its purview, although it is hard to know for sure given the largely secretive nature of the program.

Director nominee Michelle Lee has talked about the importance of patent quality ever since she became Deputy Director, and just weeks ahead of the Patent Quality Summit at the USPTO news that SAWS will be retired has to be welcome news to all applicants. This decision to end SAWS suggests that Lee will take a look at patent quality from a variety of perspectives. All too frequently in the past patent quality has been about denying more applications. This decision to retire SAWS implies that the patent quality initiative will take into consideration rules and procedures that tend to bury innovation unnecessarily. This is important because patent quality needs to be a two-way street if the USPTO wants to truly enhance outcomes.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 27 Comments comments.

  1. Paul Morinville March 2, 2015 2:39 pm

    Gene you wrote “I doubt that anyone would question that certain applications demand a heightened level of scrutiny, such as those that might claim the ability to travel faster than the speed of light or those that purport to define a perpetual motion machine.”

    My question is simple. Why does it matter if you patent something that goes faster than the speed of light or enables perpetual motion? If something is impossible to build or commercialize, there will be no way to enforce the patent because there will be no infringers, thus the patent is meaningless. On the bright side, the PTO recognizes some revenue and, who knows, there may be some snippet of knowledge in the patent that can be built upon to make a space age toaster or fishing lure.

    All that said, I’m very happy they cut the SAWS program. Will they return any lost time for any of those “pioneering” inventions delayed by the now dead SAWS program?

  2. Gene Quinn March 2, 2015 2:46 pm

    Paul-

    If the USPTO were to patent perpetual motion machines or a device that travels faster than the speed of light it would be enormously problematic on a political level. The ridicule would be endless and that would give those who want to destroy the patent system all the ammunition they need.

    -Gene

  3. Anon March 2, 2015 2:59 pm

    Even simpler – there is still a requirement for enablement (with it understood that such does not require engineering blueprints).

    Something that is quite literally impossible to do or build cannot be enabled.

  4. Curious March 2, 2015 7:45 pm

    Anon is right. The tools are already in place for the USPTO to handle “special” applications. In fact, if all the Examiners just did their job (properly), we would not have a quality problem.

    I wonder have many man-years (man-millenniums?) have been wasted at the USPTO on 35 USC 101 issues? What was intended to be a VERY wide door through which to pass has been transformed into a convoluted, morass of inconsistent law that becomes harder and harder to apply after every court decision. What should take less than 20 seconds (e.g., “OK, you are claiming a method, lets move to 102/103”) now becomes a 3 step test (step 1 and steps 2A, 2B) for which the step 2A (“is claim directed to an abstract idea?”) involves a question the answer to which no one can be sure until SCOTUS deigns to consider the particular fact pattern at hand.

  5. Night Writer March 3, 2015 7:37 am

    Curious, I agree 100 percent. I would add to what you said that 101 matters tend to be beyond an examiners skill range, which makes matters worse.

  6. Benny March 3, 2015 8:22 am

    Gene at 2,
    It might be too late…take a look at US602580 (faster than light), US8878382 and US5804948 (perpetual motion). Of course, the claims as granted do not enable the objective spelled out in the description to be achieved – the true problem is that the patents do not meet the requirements of usefulness – but as you correctly point out, they are a source of ridicule of the system.

  7. Anon2 March 3, 2015 9:03 am

    The USPTO is referring to the enhancement of patent “quality”. What section of the 35 USC is the authority for setting out the “quality” requirement for patentability? I’d also like to read up on authoritative cases decided by Courts of Law regarding the “quality” requirement. My memory is a little shaky this morning.

    Really, I just want to be reminded of the Law in this regard…

  8. Benny March 3, 2015 9:10 am

    Anon2,
    I thought “quality” referred to the quality of the examination process, not the quality of the patent. Am I missing something?

  9. Alan Stewart March 3, 2015 9:11 am

    How about an accounting of the program to date? How many applications, which applications, average length of delay from contemporary norms, some sort of statistical analysis of the impact of the program. An agency should not be able to bury its past without some accounting for what it has done. Merely shutting the program down does not fulfill the role of government nor respect the rights of those who practice before the office and the general public to whose benefit the office operates.

  10. Itzik March 3, 2015 9:12 am

    Just for the fun of it, I once saw a claim for perpetual motion that was rejected under 102…

  11. Curious March 3, 2015 9:20 am

    but as you correctly point out, they are a source of ridicule of the system
    Critics will always find source material (can you say Amazon’s 1-click patent?). The USPTO cannot be a perfect filter. Attorneys can spend hundreds of thousands of dollars just on challenging validity of a patent during litigation (i.e., a glorified examination of the claims).

    Examination at the USPTO cannot be anything more than a (hopefully) good first filter that cleans up most of the issues. Perfect examination requires that the Examiner have intimate knowledge of all the prior art that can be applied (i.e., potentially millions and millions of references). That isn’t going to happen. If we can accept that it is impossible to know (and apply) all the possible prior art, the next step is to improve the application of the law. However, since SCOTUS eschews bright-line tests (see KSR and Bilski/Alice), what could have been a cut and dry decision now becomes a decision that requires the pay grade of a Supreme Court justice to make. All the uncertainty in the law means less time searching for the best prior art and more time trying to figure out whether an invention is “obvious” and/or “directed to an abstract idea.”

  12. Benny March 3, 2015 9:45 am

    Curious,
    “Attorneys can spend hundreds of thousands of dollars…” No they don’t. Their clients do.
    The examiner will never have the depth of knowledge that the applicant and his peers have in the particular field of invention, so perhaps the next step should be a form of peer review of the examiners’ work. The applicants’ competitors will, in most cases, be only too happy to assist the examiner in his work, free, gratis and for naught.

  13. 123456789 March 3, 2015 10:07 am

    SAWS was for “embarrassing” applications (peanut butter and jelly sandwiches without a crust/sideways swinging were not ones, but would be that type) or applications from particularly litigious applicants/known trolls. Basically anything that might make the office look bad if not carefully vetted and allowed. This certainly has been confirmed by a number of former examiners and that such examples were exceedingly rare. Most examiners apparently never encounter one.

    Given how risk adverse government agencies are, its not surprising such a program existed. I wouldn’t be surprised if similar applications will not get extra scrutiny.

    Something like 20050255437 would probably be a SAWS type case.

    See claim 1:

    A process of relaying a story having a timeline and a unique plot involving characters, comprising:
    indicating a character’s fear of at least one of acting in a particular manner and performing a particular task;
    indicating said character being provided with a virtual reality environment having a characteristic;
    indicating that said character’s fear is at least one of reduced and eliminated in said virtual reality environment due to said characteristic; and
    indicating a belief of said character that said character is in said virtual reality environment at a time in said timeline in which said character is not in said virtual reality environment.

  14. Benny March 3, 2015 10:16 am

    1-9,
    …or any application by John Quincy St Clair. (11 applications in all – good for a laugh). Apparently some voting citizens believe that St. Clair (and his ilk) are attempting to promote genuine science, and are being suppressed by the government.

  15. Anon2 March 3, 2015 10:35 am

    Benny @ 8,

    You are correct that it “should” be about quality of examination. You are missing only the sarcasm in the tone of my post.

    Note, how often you see from the USPTO the term “quality” dangling like a floating abstraction as though “quality” *as such* were to be pursued, and note how often you have heard Ms. Lee refer to “patent quality” as compared to “quality of examination”.

  16. Sid March 3, 2015 11:07 am

    I am happy to see this program exposed and abandoned. It caused one of my clients grief to the extent that I questioned the sanity of the examiner in the convoluted and irrational rejections that were made.

    For those who read the SAWS document, you will recognize this application as the independent claim of the application (in detail)was the stated criterion for inclusion in the program.

    I will be most interested in seeing the careful crafting of the next office action.

  17. Anon13 March 3, 2015 11:18 am

    Alan@13
    I agree. How many applications were abandoned under this regime? Who was running the program (who had authority to approve changes)? How has it evolved over time?
    What will be done for patent applicants who fought endless delays and lame rejections for 5+ years, finally abandoning their application after spending 5x-100x their IP budget, and all the while they were unaware that their application was in SAWS? Will applications that were delayed for many years automatically be extended? Was congress aware of this program when they legislated patent reform (mine weren’t)? What other programs (“[SAWS] is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency”) should congress be aware of before proceeding to consider further reforms?

  18. Curious March 3, 2015 1:54 pm

    No they don’t.
    Getting awfully picky over an expression?

    The applicants’ competitors will, in most cases, be only too happy to assist the examiner in his work, free, gratis and for naught.
    Meh. Similar things have been done before. What company wants to divert resources to maybe preventing a patent. Hard to justify a ROI on that activity.

  19. Anon March 3, 2015 2:11 pm

    Curious,

    The bigger (and more obvious) problem with such a scheme is that that too favors the established large entities at the expense of the small new entities.

    That is exactly the type of “fix” that we must avoid.

  20. Curious March 3, 2015 4:48 pm

    The bigger (and more obvious) problem with such a scheme is that that too favors the established large entities at the expense of the small new entities.
    For one, as past performance has indicated, few people want to invest their time and effort on these “crowd-sourced” projects. Really, I know a lot of attorneys (patent attorneys even) who don’t understand claim language — how is a layperson going to accurately evaluate what is being claimed (as opposed to what is being disclosed which can include a LOT more than what is claimed)?

    That being said, I agree that we should be sensitive to procedures that disproportionately favor the well-heeled. Patents are the sport of kings as it is — I would hate to be a small inventor trying to prevent a large company from infringing my patents these days — it is nearly impossible (and getting worse).

    However, as I have written in the past, this type of lobbying activity is something one should expect from these companies. They have the ability to “mold” policy so it is in the best interest of their shareholders to exercise this ability to lobby that patent lawsuits (no matter the merit) be more difficult for the patent holder.

    It is as if before the fight between David and Goliath, Goliath went to the referee and said, “David really needs a blindfold, and while I’m thinking about it, he can only have 2 rocks and each cannot be any larger than 1 inch in diameter — also, if he misses on the first rock, he has to drop the second rock — oh, by the way, when we are done, I have some gold to give you for your next reelection campaign. You are doing a great job, keep it up!”

  21. Benny March 4, 2015 2:29 am

    Curious at 18.
    You ask, “What company wants to divert resources to maybe preventing a patent.?”
    Ours does. We do. We file third party submissions and EU oppositions after spending hours looking at prior art. Compared to the cost of litigation, IPR, licensing, or re-tooling production to avoid infringement, it’s a bargain. I’m surprised more companies don’t do it.

  22. Anon March 4, 2015 8:06 am

    Benny,

    Would you be surprised if I told you that many companies actually actively forbid their workers from looking at patent applications?

  23. Benny March 4, 2015 8:41 am

    Anon,
    I have heard of that policy, which I consider foolish. Our company has an opposite policy.
    Allow me to add a note to my previous comment about opposing patent applications being the lowest cost option – I have been quoted 3000 Euro for a prior art search from a respectable law firm. The request to our R&D department for the same search began “Could you, in your spare time…”

  24. Curious March 4, 2015 3:35 pm

    Ours does. We do. We file third party submissions and EU oppositions after spending hours looking at prior art. Compared to the cost of litigation, IPR, licensing, or re-tooling production to avoid infringement, it’s a bargain. I’m surprised more companies don’t do it.
    That may be true, but you are definitely in the minority and are probably working with a very specific set of circumstances: e.g., you probably have a very small but very well-known set of competitors that files relatively few patents. Imagine if a company like Microsoft or Google had to do this — they would need to reviews tens of thousands of patents a year.

    The request to our R&D department for the same search began “Could you, in your spare time…”
    I’ll repeat my comment above about most people not understanding claim language. If your R&D people don’t understand the claims, then their searches aren’t worth much. However, if you have extremely easy to understand inventions with similarly easy to understand claim language, then you are in luck.

  25. Anon March 4, 2015 4:08 pm

    Curious,

    As to your point at 24, Benny routinely “gets the law wrong,” and suffers very much from an engineer-only viewpoint.

    If his filter is like his views, well, what you will get is a self-reinforcing paradigm, one that is simply and woefully inadequate.

    But you can get that both fast and cheap (cheap at least as far as input costs go).

  26. Simon Elliott March 4, 2015 9:24 pm

    There are two problems with having patent searches done in-house by engineers/scientists.
    1. Most do not understand claim language and/or read the art through the filter of the main contribution of the inventor, and therefore miss things. I encounter this sort of thing all the time, when an inventor tells me that patent X does not concern Y, and I have to point out that Y is not only disclosed in the patent but supported by working examples.
    2. A search done in house is discoverable and immediately attributable to the company. So, that prior art your engineer missed is not only going to invalidate your patent, but exposes the company to inequitable conduct, willfulness, enhanced damages etc. Asking your lawyer to do the same thing means that the search is attorney work product and the results communicated to you are privileged. If the attorney thinks that a reference is relevant, you should cite it. If the attorney thinks it is not relevant, you have a defense for your failure to cite it.

  27. Benny March 5, 2015 1:57 am

    Curious,
    Regarding the specific set of competitors and complexity of applications filed, both your assumptions are correct.