Next Steps on the USPTO Sensitive Application Warning System

The USPTO has now offered some public information regarding its secretive Sensitive Application Warning System with the apt acronym: SAWS. [LINK]  SAWS came to light after it was ‘leaked’ by examiners and Devon Rolf has written about his experience with the program on IP Watchdog.

The basic idea is that examiners have been encouraged to flag applications that claim “highly controversial” or those that might create “unwanted media coverage.”  Those applications are then tiered and then before allowance must be approved by either a technology center director or upper PTO management.

A major problem with the program of course is that none of the heightened reviews are made of-record.  Thus, neither the applicants nor the public are told which applications are up for review or whether the review is following any semblance of legal process.

My position is that the USPTO is right to allocate more time and energy on applications whose claims are clearly very broad in a way that would significantly alter the marketplace.  Of course, the review cannot be directed at avoiding USPTO embarrassment but rather to ensure that the issued patent complies with the law of patentability.  Avoiding embarrassment will be a secondary benefit.  As I mentioned above, the real problem here is the Office’s continued secrecy in this front.  We do not know which applications have been chosen, why they were chosen, or whether the level of review follows the law.  Because nothing is done on record, applicants likewise have no recourse regarding potential political capture of the examination process.

After the SAWS reports were leaked (and on my private suggestion) the office finally publicly admitted that the program exists and has provided some information regarding its progress.

[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.  {DC What are the other internal efforsts?} By bringing an additional quality assurance check to a very small number of pending patent applications, the USPTO helps ensure that those applications that could potentially be of special interest, are properly issued or properly denied.    An application flagged for such a quality assurance check undergoes the same types of examination procedures as any other patent application, and is held to the same substantive patentability standards.

In terms of numbers, the USPTO also reported that only about 0.04% of applications fall into the program.  This is only one application out of every 2,500 considered — the message here is “trust us – we’re just dealing with the oddballs.”  Overall, it looks like about 1,000 applications have been part of this particular program.

[USPTO SAWS DISCLOSURE]

I have requested that the USPTO provide a list of publicly-available applications that have been flagged for the SAWS program. Thus far, the USPTO has refused – claiming that the list of applications is privileged under exemption (b)(5) of FOIA.  My position is that privilege is not applicable to protect this list – especially based upon the tradition and legal requirements that examination be done on the written record with proper notice. See 35 U.S.C s132 and 37 C.F.R. s1.104.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

235 thoughts on “Next Steps on the USPTO Sensitive Application Warning System

  1. link to ipwatchdog.com

    “With respect to those who spoke about software and the abstract idea exception there was near unanimous agreement that more examples are required because in practice it is virtually impossible to figure out whether a claim covers an abstract idea under the current guidance. ”

    The question arises: are these people stone ignorant or just blatant liars? Or a little of both?

    1. Putting the irony aside for the moment, let’s look at Malcolm’s “critique,” or rather, whom that comment on Mr. Quinn’s blog appears to be in reference to:

      Hans Sauer – Deputy General Counsel Biotechnology Industry Organization

      Bob Stoll – Partner, DrinkerBiddle, Former Commissioner for Patents

      Jim Crowne – Deputy Executive Director for Legal Affairs, American Intellectual Property Law Association

      Micky Minhas – Associate General Counsel Microsoft Corporation

      Um, Malcolm any one of these in particular that you wish to “tar?”

      1. Malcolm any one of these in particular that you wish to “tar?”

        To the extent these people fall into the class of so-called “experts” who find it “impossible to determine” “in practice” whether a software claim covers an abstract idea (as was reported), they all deserve to be “tarred.”

        We have numerous examples from the courts that make that task very easy in many commonplace instances (well, they were commonplace anyway). Pretending to be confused about, e.g., the eligibility of a claim reciting “A computer, wherein said computer is configured to output an sewer repair employment contract in response to a user request” is irresponsible, to say the very least.

      2. Um, Malcolm any one of these in particular that you wish to “tar?”

        Arguments to authority aside, when the claim and the spec say “We want to achieve this, and we are explicitly not limiting the manner in which this is achieved” you don’t need more guidance to understand its a claim on an idea of “doing this”. In fact, you didn’t even need to understand the concept of abstract ideas, you just needed to understand the concept of “precedent” and the strict analogy to Morse. “Rawr, non-limited claims to end results bad.” So if what you’re saying is that none of the above understand the concept of legal precedence then yes, they should not be practicing. They should take heart though, because in fairness the CAFC isn’t far behind them.

        I think these people are confusing the fact that they want something they can’t have with the lack of clarity on achievement. I bet all of those people would ask for more examples of how to patent an obvious invention as well. They’re not bad thinkers, just good advocates.

        1. Random, I am not sure most practitioners have ever read Morse, or for that matter, Hotel Security. What they have read is Benson, which is not a shining example of clarity because of its closing statement regarding preemption. Had Benson simply followed the outline of Hotel Security, the history of 101 jurisprudence in the last 40+ years would have not been so difficult.

          Prometheus/Alice represent a return to Hotel Security without acknowledging its guidance. In truth, Steven wanted to follow Hotel Security in Bilski. His colleague, Breyer, wrote Prometheus. And, it appears, Stevens and Hotel Security have emerged victorious, even though the Court will never acknowledge this.

          Practitioners wanted to understand, really understand Alice and Benson need only to read Hotel Security.

          1. Really understand what, Ned?

            That 3, the new 4, is not 5?

            That – as even Prof. Crouch directly told you – that Hotel Security is NOT controlling law and does NOT have the authority you continue nonetheless to present that it does?

            You do know that Random is especially challenged and that your feeding him this claptrap will not help him, right?

    2. While I consider the term “abstract idea” unfortunate, despite the rude way MM makes the point, he is correct that the court decisions on the issue is quite clear. The judiciary will not allow a patent applicant to stake out a claim that covers purely analytic or purely a priori knowledge.

      Kant discusses the concepts in detail in Prolegomena to Any Future Metaphysics That Will Be Able to Present Itself as a Science (1783).

      Examiners and prosecutors dealing with software systems should probably have some understanding of Lambda Calculus. An elementary introduction can be found at the following link.

      link to ftp.cs.ru.nl

      Because MM considers those that have problems with the abstract idea exception to be ignorant or liars, I invite him to take a look at Backes ‘137 (Transparent load sharing for parallel networks).

      link to google.com

      Both independent claims are directed to an extension of the Spanning Tree Algorithm. Both the Spanning Tree Algorithm and this extension are purely abstract mathematical ideas from Graph Theory. Why was Wellington Chin correct to allow the claims? (I have to qualify that I would have made the prosecution lawyer fix the grammar of the claims.) Why are there two independent claims?

      1. Metaphysics…
        Physics…
        Philosophy…
        Math…
        Applied math…
        MathS… (See Tegmark)

        Finally, software is NOT something TOTALLY in the mind. Software is DEFINED to be a machine component, a manufacture in its own right. Software is equivalent to hardware and equivalent to firmware.

        These are fundamentals.

        1. The issues associated with 101 are epistemological and not technological. We expect examiners, who make technological judgments with respect to 102, 103, and 112, to have a reasonable understanding of technology. Examiners making epistemological judgments with respect to 101 should have a reasonable understanding of epistemology.

          I am not asking for much. I am not arguing that examiners should know Kant’s Critique of Pure Reason backwards and forwards. I read Kant’s Prolegomena to Any Future Metaphysics That Will Be Able to Present Itself as a Science in my junior year at prep school.

          Software can be a component of a well-defined technological system (as the court held in Diamond v Diehr), but in some cases it clearly is not (as the court held in Gottschalk v Benson).

          Until recently examiners have had no problems with the extensive software found in packet switching and RAID devices.

          Lately I have been seeing a change in the above treatment of software as a component at the same time as I see examiners grant stuff like the following January 2015 patent entitled “A Generalized Policy Server”.

          link to patft.uspto.gov

          Here is the first claim formatted to facilitate comprehension.

          link to drive.google.com

          Note how badly the claim is structured grammatically.

          It is missing an “and” after “network;”.

          There are three nominative absolutes scattered through the claim. I admit that it is a prejudice, but nominative absolutes (like ablative absolutes in Latin and genitive absolutes in Classical Greek) are inherently ambiguous and indefinite.

          And look at all the dangling “wherein” clauses. I think these are added to confuse examiners with a poor grasp of English. “Wherein” is a relative adverb that means “in which” and that should be placed in some reasonable proximity to the antecedent, which in this case is probably “A method for controlling access to network information”. My sixth grade English teacher would have bewailed “dangling modifiers”.

          Most examiners will probably follow the suggestion from MPEP 2111 and ignore the “wherein” clauses.

          2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-08.2012]

          Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:

          (A) “adapted to” or “adapted for” clauses;
          (B) “wherein” clauses; and
          (C) “whereby” clauses.

          The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002) (finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id.

          So if we eliminate the “wherein” clauses, is this claim directed to anything that requires a computer and software?

          If the SAWS program were really focused on patent quality, wouldn’t it be concentrating on making sure that claims like this one never appear in allowed patents

          a) instead of making it hard for Alzheimer’s treatments to reach the public or

          b) instead of trying to guarantee that the next Microsoft or Cisco is not a US corporation?

          1. I will give your comment some more thought, but you should be aware that your view of Benson is explicitly wrong. Read again the decision, and look for the phrase “we do not so hold.”

            1. Here is the paragraph in question from Gottschalk v Benson.

              link to caselaw.lp.findlaw.com

              It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.

              It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which [409 U.S. 63, 72] means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

              The court points out that there might exist patent-eligible methods that do not meet the machine or transformation rule. So?

              The method described in claim 8 or claim 13 is hardly more than pseudo-code for a subroutine that receives a BCD encoded number as some form of unspecified input and that converts the BCD representation to binary with unspecified form of output.

              The input is in a machine register and the output is in a machine register.

              The method is nothing more than a verbal expression of a pure algorithm completely implemented on an unspecified digital computer and confined thereto. One might as well patent a subroutine (or the associated pseudocode) to calculate a Fibonacci number or a subroutine to compute the square root of number.

              In contrast, Claim 1 of Backes ‘137 describes a method

              (1) that is a network protocol application of a pure algorithm and

              (2) that changes how packets traverse a network.

              It is easy to see why the method claims of Benson are patent-ineligible while the method claims of Backes ‘137 are without question patent-eligible.

          2. Joachim, One today often sees the novelty of a claim being expressed in wherein clauses. Our Euro allies particularly like to use “wherein” as a linguistic substitute for “characterizing,” where the old elements are defined earlier and the new portion come after.

            So, in the example claim, the steps requiring action, e.g., “storing a local copy,” are old and conventional. The wherein clauses contain the novelty.

            Unscrambling the claim, with this view, it appears that the claim is to software that encrypts a message with certain information upon meeting certain criteria. Thus, everything in the claim is old but the criteria and the information encrypted.

            1. Ned,

              Are you seriously trying to make a Jepson claim parallel here?

              You still cannot help yourself on 101 matters, can you?

              (psssst – Benson still states “we do not so hold”)

            2. Which Euro allies are using non-standard Engish?

              [Please check out the Merriam-Webster definition of “wherein”.

              link to merriam-webster.com ]

              In German “worin” == “wherein” is the normal inanimate relative. In Spanish “en donde” simply does not mean “such that” or “so that”, which I think are the meanings proposed for “wherein” in the first claim of the Generalized Policy Server patent (Hannel ‘311).

              link to patft.uspto.gov

              I suppose one might get away with such bad English in a court whose judge tolerates linguistic atrocity, which is not even Patentese, but I would be loathe to assist in an infringement case in which I had to justify a charge of infringement before a judge that was a stickler for grammar.

              I will try to sort out what the claim should be, but let’s take a look at the Abstract and especially at the italicized text in the Abstract. [Note that only the emboldened sentence is correct English/Patentese.]

              “A scalable access filter that is used together with others like it in a virtual private network to control access by users at clients in the network to information resources provided by servers in the network. Each access filter use a local copy of an access control database to determine whether an access request made by a user. Changes made by administrators in the local copies are propagated to all of the other local copies. Each user belongs to one or more user groups and each information resource belongs to one or more information sets. Access is permitted or denied according to of access policies which define access in terms of the user groups and information sets.

              Here is what I believe to be meant.

              A scalable access filter is used together with others like it in a virtual private network to control network client user access to information resources provided by network servers. Each access filter uses a local copy of an access control database to determine whether an access request has been made by a user. Changes made by administrators in the local copies are propagated to all of the other local copies. Each user belongs to one or more user groups, and each information resource belongs to one or more information sets. Access is permitted or denied according to access policies, which define access in terms of the user groups and information sets.

              If the USPTO is really trying to improve patent quality, the first step would consist of creating an MPEP entry that describes “Elements of Patent Style. The second step would consist of creating a formal system of grammar and punctuation review for allowed patents.

              The SAWS star chamber that thwarts normal patent examination has no connection whatsoever with patent quality.

              1. Joachim, your overt focus on “proper” grammar reminds me of the following lesson that language is itself just a man-made fabrication and tool.

                There are two versions. First, focusing strictly on recognizing and processing each word with just letters skewed:

                if yuo can raed tihs, you hvae a sgtrane mnid, too.
                Can you raed tihs?

                i cdnuolt blveiee taht I cluod aulaclty uesdnatnrd waht I was rdanieg. The phaonmneal pweor of the hmuan mnid, aoccdrnig to a rscheearch at Cmabrigde Uinervtisy, it dseno’t mtaetr in waht oerdr the ltteres in a wrod are, the olny iproamtnt tihng is taht the frsit and lsat ltteer be in the rghit pclae. The rset can be a taotl mses and you can sitll raed it whotuit a pboerlm. Tihs is bcuseae the huamn mnid deos not raed ervey lteter by istlef, but the wrod as a wlohe. Azanmig huh? yaeh and I awlyas tghuhot slpeling was ipmorantt!

                Version two (with numbers thrown in):

                F1gur471v3ly 5p34k1ng?

                7H15 M3554G3
                53RV35 7O PR0V3
                H0W 0UR M1ND5 C4N
                D0 4M4Z1NG 7H1NG5!
                1MPR3551V3 7H1NG5!
                17 WA5 H4RD BU7
                N0W, 0N 7H15 LIN3
                Y0UR M1ND 1S
                R34D1NG 17
                4U70M471C4LLY
                W17H 0U7 3V3N
                7H1NK1NG 4B0U7 17,
                B3 PROUD! 0NLY
                C3R741N P30PL3 C4N
                R3AD 7H15.
                (and then the obligatory)
                PL3453 F0RW4RD 1F
                U C4N R34D 7H15.

                The mind also handles sentences and paragraphs that are “less than perfect.” While one can desire the legal documents to have had better care in their construction, certain errors just do not rise to the level that you appear to be particular about.

              2. Jo, I like your idea of requiring readable patents with acceptable grammar, and clearly written claims. Perhaps grammar guidelines could be proclaimed, and every prospective patent agent and attorney be required to pass a written grammar test prior to being anointed.

                But as to practicing agents, an examiner could flag poorly written specifications/claims to a special grammar guru, who could be empowered require the responsible practitioner(s) to take and pass the grammar test as a condition of continued practice.

                I am not so sure that one could reject a claim for bad grammar.

                Or could one?

                1. I have certainly seen non-final rejections for bad punctuation, and bad grammar often creates indefiniteness.

          3. Joachim,

            You are a man with a hammer, looking for nails.

            To wit, your statement of “The issues associated with 101 are epistemological and not technological. simply is not true.

            You are letting your own experience and knowledge base usurp the proper perspective of the law.

            Why do you think I listed the words that I did at 29.2.1?

            Think about it.

            As to “I am not asking for much.“, it may in fact not be much, but nonetheless, you ask for the wrong thing.

          4. Joachim,

            You have the goldilocks syndrome going on here.

            You have yet to find the sweet spot of the baby bear.

            You have the papa bear of “too hard” – missing the boat by swerving too hard into philosophy;

            You have the mama bear of “too soft” – missing the boat by swerving into the too fine details of ‘perfect’ grammar.

            One more try – if you are able to recognize and adapt to the weaknesses pointed out – should do the trick.

      2. J Martillo: Because MM considers those that have problems with the abstract idea exception to be ignorant or liars,

        Good grief! First of all, that’s not even close to what I actually wrote. Second of all, it’s not my position.

        It’s entirely possible to have an intelligent, coherent, reasonably defensible view that there are “problems” with some aspect of the so-called “abstract idea” exception. But that’s entirely different from taking the unreasonable and indefensible position that “it’s impossible to determine when a claim protects an abstract idea” or the position that “if my favorite claim is abstract than everything is abstract” or (my personal favorite”) “obviousness can take care of all these problematic claims.”

        Why was Wellington Chin correct to allow the claims?

        Who said that he was correct?

        I do find it amusing that the improvement over the prior art here is supposed to be “preserving the time sequence” of distributed messages. The method of claim 1 achieves that goal in a truly magical manner: you “execute a scheme” which “causes” the time sequence to be preserved. It’s just like rocket science, except you don’t need to do any science and you never need to describe your new rocket. You just state that somebody “executes a scheme” that “causes” the new rocket to fly faster and more accurately and voila! instant patent because, hey, who doesn’t want a faster, more accurate rocket?

        Returning to my original point, JM, I’m not denying that there are always going to be cases on the margins of any rule that are more difficult to analyze compared to others. The existence of such cases doesn’t nullify that rule or render the rule incomprehensible. Equally unpersuasive on that front is the existence of a group of deeply conflicted, directly interested, self-described “experts” endlessly proclaiming their “confusion” while failing (apparently) to understand the core concerns leading to the development of the rule.

        1. ipse dicat — How should I have interpreted the following.

          “With respect to those who spoke about software and the abstract idea exception there was near unanimous agreement that more examples are required because in practice it is virtually impossible to figure out whether a claim covers an abstract idea under the current guidance. ”

          The question arises: are these people stone ignorant or just blatant liars? Or a little of both?

          Anyway MM asks:

          Who said that [Wellington Chin] was correct?

          He was, and it should be clear to anyone that understands Diamond v Diehr.

          I understand that MM probably has not read the patent and its claims closely.

          “[P]reserv[ing] the time sequence of messages” was not the improvement over the prior art. At the time period [1988-1990] the problem of time sequence was an issue of contention between advocates of Spanning Tree based bridges and Source Routing based bridges.

          Because the Spanning Tree algorithm removed the redundant links/ports in the graph onto which the network topology could be mapped, a MAC layer network, which used Spanning Tree based bridges, preserved frame sequence from the source end host to the destination end host — something that was not always guaranteed in Source Routing systems.

          Backes and his fellow inventors were focused on making an important improvement to Spanning Tree based systems as the title of the patent discloses: Transparent load sharing for parallel networks.

          The inventors explain the problem in the Background.

          The spanning tree algorithm in this form, however, creates an additional problem. If messages are forwarded on only one of the trunked networks, congestion may result.

          The inventors point out that procedures other than theirs do not preserve time sequence.

          The “binding scheme” is fully detailed in the text and diagrams, and there is more than enough info in the written specification to enable a PHOSITA like me to implement the invention. [Note that the claims do not have to repeat the specification.]

          While the independent claims are directed to the Spanning Tree Algorithm, they in fact claim

          [1] an extension to the Spanning Tree Protocol (really a procedure that deterministically extends the possible behaviors of a bridging device in response to explicitly defined configuration data and to explicitly defined data exchanged among the bridges of the MAC layer network) and

          [2] the device on which this software extension has been implemented.

          The courts have generally not had problems with security, signaling, terminal concentration, and networking protocols because they are inherently limited to device interactions and cannot be considered abstract ideas in the judicial sense or analytic knowledge in the Kantian sense.

          As with Diehr ‘143, the Backes ‘137 represents a genuine non-obvious improvement and innovation over prior art.

          There is nothing at all borderline about the allowability of the claims in Backes ‘137 (as anyone that understands Diamond v Diehr should realize), and I have found nothing at all confusing about the case law on 101 although I consider some of the terminology badly chosen.

          The real problems with 101 analysis are the following.

          1. Some of the USPTO guidance seems misleading.

          2. Americans don’t receive the basic pre-college philosophy training that is not uncommon in European educational systems.

  2. I love the conspiracy threads running through this post, as if every rejection you got was part of a super secret program designed specifically to screw you. The office has been allowing 75-85% of its applications for years, kids. If we’re running a secret “reject everything” program we must be pretty bad at it. Examiners just love searching, mapping out 30 pages of rejections, and engaging in legal writing against attorneys when they have no legal background rather than doing the 2hr paperwork on allowances, right?

    I assure you the actuality is that the problem runs in the opposite direction.

    To those of you who complain about the secrecy qua secrecy – you guys I actually get. You might want to consider though that, as Dennis reported, only about 0.04% of applications fall into the program. You probably know when the application falls in, because you know from experience that your application deviates so far from the regular (or perhaps you don’t know, for exactly the same reason). That’s not a substitute for the office actually explaining (though I’m not sure they should be required to, legitimate as your desire to know is).

    1. If you had a client who got “75-85%” of allowed applications, and then one day one of their applications fell into the SAWS program – the program that no one knew about until recently? Have you ever faced this situation on trying to explain this to a client why nothing seemed to work to overcome the never-ending rejections, even after multiple RCEs, multiple amendments, multiple interviews, and then, just nothing going in the right direction. What do you think happens to the reputation of a competent patent attorney when the prosecution costs goes through the roof? SAWS is scary because it can damage the reputation of anyone competent, only because someone high in the USPTO is politically driven never to allow the application. I hope someday one of your applications lands in this program and then you will be crying “conspiracy” more than the rest of us.

      1. randomchaotic Have you ever faced this situation on trying to explain this to a client

        Like every patent attorney who’s practiced for any length of time, I’ve explained all kinds of unfortunate stuff to clients.

        But there is nothing easier to “explain” to clients than legal or administrative decisions that were beyond my control or the control of my law firm. Responsible attorneys explain the possibility of those events (which are inevitable in patent law) to clients up front, before they take their money. It’s a great way to avoid malpractice — you should practice it far more often if it seems difficult to you. That’s especially true if you are prosecuting on behalf of some client who believes he/she is entitled to dominate an entire industry, and triply true if tht belief is based on some allegedly non-obvious “innovation” that was secretly filed on 25 years ago.

        What do you think happens to the reputation of a competent patent attorney when the prosecution costs goes through the roof?

        Again, if the attorney is doing his/her job, nothing at all happens to the attorney’s reputation because the client has been forewarned about the possibility of increased costs with every decision that is made.

        SAWS is scary because it can damage the reputation of anyone competent,

        Complete horsehockey. Once again: we’re talking about an internal process to ensure that claims with the most industry-damaging potential are examined with the utmost care. It affects a microscopic number of patent applications.

        Besides, the day that the typical patent prosecutor starts worrying about their “reputations” before they take money from clients and put arguments on the public record that would offend the decency of most people is the day I eat my entire collection of hats.

        I hope someday one of your applications lands in this program and then you will be crying “conspiracy”

        News flash: not everybody thinks like you. Most reasonable people don’t leap to conspiracy theories whenever their interests are threatened. It is, unfortunately, a bad habit of a certain class of patent prosecutors who regularly comment on blogs here and elsewhere.

      2. If you had a client who got “75-85%” of allowed applications, and then one day one of their applications fell into the SAWS program

        I doubt anybody who files enough patents to have a solid 75-85% number wouldn’t file an application that would trigger SAWS. But let’s assume that happens…

        Have you ever faced this situation on trying to explain this to a client why nothing seemed to work to overcome the never-ending rejections, even after multiple RCEs, multiple amendments, multiple interviews, and then, just nothing going in the right direction.

        Worse – I’ve tried to explain to a lawyer why nothing they will do will cause an allowance.

        It’s this logic that a certain amount of “try hard”ness should always result in a patent that gets examiners upset. No amount of work will put words in the spec that weren’t there before, and sometimes there’s just nothing patentable there. If 75-85% of patents issue, that doesn’t mean the other 15-25% are all a conspiracy to keep your guy from having a patent. It’s not a registration system.

        SAWS is scary because it can damage the reputation of anyone competent, only because someone high in the USPTO is politically driven never to allow the application.

        You’re acting as if SAWS is an inherent failure of the application. It is not – an application is always subject to the statutory standards. Let’s take one of the items listed on the linked sheet: A perpetual motion machine. If you submit claims on a perpetual motion machine, you probably shouldn’t be surprised when it is continually rejected no matter how much work, interviews, RCEs or client money you throw at it. Nor should you incorrectly attribute the failure of the claims to the fact that they might or might not be in any particular quality control program. The damage to the lawyer’s reputation comes in when they filed the application (as it shows they probably shouldn’t be in this business), not when the ridiculous application failed to be allowed.

        I hope someday one of your applications lands in this program and then you will be crying “conspiracy” more than the rest of us.

        If an examiner doesn’t like your application, they don’t need to flag it to engage a convoluted multi-group conspiracy to twirl their mustaches and keep it from issuing. They pretty much just reject it on their own, something which happens at a far higher rate than .04%. There’s no need for a secretive rube goldberg rejection machine, so you probably shouldn’t assume that it what SAWS is.

        1. RG: Let’s take one of the items listed on the linked sheet: A perpetual motion machine. If you submit claims on a perpetual motion machine, you probably shouldn’t be surprised when it is continually rejected no matter how much work, interviews, RCEs or client money you throw at it. Nor should you incorrectly attribute the failure of the claims to the fact that they might or might not be in any particular quality control program.

          But the end result of this is that US is going to lag behind the rest of the world in the development of perpetual motion machines! The same is true for math knowledge pills and instant hangover cures.

          Why do so many people here hate innovation? It’s like some kind of conspiracy to ruin the country.

  3. “[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. ”

    So we’re back to quality = reject reject reject?

    How regressive.

    1. bja So we’re back to quality = reject reject reject?

      Sounds like the PTO is just starting to regain its sanity and attempt to extract itself from the grimy clutches of its patent-worshipping captors.

      Try to keep the hysteria under control. Rather than giving 1 in every 20 or applications a serious once-over before grant (which is what it should be doing, at a minimum), the agency is taking special care with 1 in 2500 applications. That’s a microdroplet in a very big bucket.

      The odds that your applications would be affected by this are very, very close to zero.

      On the other hand, if you want to share some claims that you are prosecuting with the blog, I’m happy to discuss their validity and/or eligibility with you. That would be helpful for everybody. Free of charge.

      1. Enough Malcolm malarkey already.

        Malcolm, you do realize that the number of applications affected has ZERO to do with any question of legality/illegality, right?

        if you want to share some claims that you are prosecuting

        Why don’t you follow your own advice and share your claims? After all, aren’t they a model or how things “should be” done? Why the reticence?

        starting to regain its sanity and attempt to extract itself from the grimy clutches…

        What was that phrase? Oh yeah: “You don’t sound dispassionate at all, to me.”

        Further, you have some serious readjustments to make if you think this type of Star Chamber (yes, per Joachim’s explanation) tactic is an acceptable manner of achieving ANYTHING.

        The ends do not justify the means.

        Ever.

        1. What was that phrase? Oh yeah: “You don’t sound dispassionate at all, to me.”

          I never claimed to be “dispassionate.”

          Keep beating that straw.

          Star Chamber

          LOLOLOL

        2. “anon” the number of applications affected has ZERO to do with any question of legality/illegality

          I haven’t seen any convincing evidence of any “illegality.”

          And the number of applications “affected” is certainly relevant to the hysterical “star chamber” rhetoric which I am questioning (to the extent I’m not laughing outright). That’s because the number of applications “affected” is not only incredibly tiny compared to the number of pending applications which are not “affected” (but which should never be granted) but it’s also incredibly tiny compared to the impact that the allegedly “affected” claims will have on the public if they are improvidently granted.

          This is just an administrative agency doing to the job that the public created the administrative agency to perform. It’s no surprise that the same folks whose heads explodes every time their precious patent “rights” are negatively impacted are desperate to turn increased diligency by the PTO into some kind of a “scandal.”

          It’s what you guys do for a living, after all. It’s what you’ve always done. But go ahead and tell everyone again how much you value “quality examination”. That’s always good for a laugh.

          1. I haven’t seen any convincing” – a segue that indicates what you say next is completely meaningless, as what you see and your version of convincing simply carries no weight.
            Number of applications affected – ARE irrelevant. Period. No if’s ands or buts – you simply do not get to ignore the means to achieve ANY ends.

            BTW, the USPTO site does have a graph indicating the number pulled: since 4/30/2010, approximately 26,000 applications have been pulled – and are still pending – the graphic does not indicate how many additional were pulled and are not still pending.

            Your “just doing its job” FAILS to account for the secrecy and YES – Star Chamber tactics. Joachim properly set out for you the definition and all you have done is attempt to “laugh it away.”

            It’s not going away. And yes – it is a scandal, no matter how deep you want to bury your head.

            (as for the ‘make-you-laugh’ desire for better examination, again – oddly – Joachim correctly points out that this Star Chamber C R P has nothing to do with BETTER examination)

            1. It’s not going away. And yes – it is a scandal,

              Remember when the PTO director confirmation “scandal” was going to damage Obama’s presidency?

              That was pretty funny.

              Gosh, I’m getting sleepy just thinking about this “scandal”. It’s so sordid … like a star … chamb…

              [insert deep snoring sound]

  4. For years I have wondered whether there was a remedy to examiner misbehavior or incompetence. As far as I can tell the examiners really have no downside in abusive prosecutions.

    No one has ever tried a Bivens action against an examiner, and successful Bivens action results have only occurred with respect to the 4th, 5th, and 8th amendments.

    Yet especially in the case of SAWS, where there seems to be explicit disregard of SCOTUS’ rulings and where clear Congressional decisions seem to be ignored, I wonder if SCOTUS might be willing to broaden the applicability of Bivens.

    Constitutional Torts – Bivens Actions

    The Supreme Court created a private damages action against federal officials for constitutional torts (civil rights violations), which are not covered by the FTCA. In Bivens v. Six Unknown Named Agents of Fed. Bureau of Narcotics, 403 U.S. 388 (1971), the Court held that the Fourth Amendment gives rise to a right of action against federal law enforcement officials for damages from an unlawful search and seizure. Since a Bivens action is brought against a federal official in the official’s personal capacity, it is not considered to be an action against the United States and therefore is not barred by sovereign immunity. Bivens is not a general tort law. The plaintiff seeking a damages remedy under Bivens must first demonstrate that constitutional rights have been violated.[Davis v. Passman, 442 U.S. 228 (1979) ]

    Bivens suits have been acknowledged by the Court as having more of a deterrence effect against federal officials from committing constitutional torts than the FTCA. This is chiefly because a Bivens suit is a personal suit against the official, and punitive damages are recoverable. The government is substituted for the defendant in FTCA cases, and the FTCA does not allow punitive damages. Thus a Bivens defendant is at risk of personal liability, including punitive damages, while the government pays all damages in FTCA cases. Procedurally, a plaintiff is entitled to a jury trial in a Bivens action, but not in a FTCA case.[Carlson v. Green, 446 U.S. 14 (1980) ]

    The main defense for a federal official in a Bivens action is official immunity from actions for damages. There are two types of official immunity available as affirmative defenses: absolute and qualified.[ Butz v. Economou, 438 U.S. 478 (1978)] Absolute immunity is granted to judges, prosecutors, legislators, and the President, so long as they are acting within the scope of their duties. Qualified immunity applies to federal officials and agents who perform discretionary functions, but may be overcome by a showing that their conduct violated a constitutional right.[Harlow v. Fitzgerald, 457 U.S. 800 (1982) ]

    1. Jo, but what if the patent applicant has a remedy by simply appealing, petitioning the Director if necessory and/or filing suit by right under 35 USC 134/145.

      What I see here are supine patent attorneys who are not used to standing up for their rights.

      1. It seems necessary to file an appeal under 35 USC 145 before undertaking a Bivens Action.

        Unfortunately, the appellant receives no compensation for torts from denial of Constitutional rights. See below.

        The Bivens Action might make it possible to recover expense and losses from the examiner, the examiner’s supervisor, and anyone else involved in the denial of Constitutional Rights.

        35 U.S.C. 145 Civil action to obtain patent.

        An applicant dissatisfied with the decision of the Patent Trial and Appeal Board Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.

        (Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A).)

        1. Good point.

          The statute seems to assume an honest difference of opinion between the Office and the applicant, not an abuse of process by some examiners.

          1. An honest difference of opinion would not be a denial of Constitutional Rights while USPTO procedures should catch gross incompetence.

            Maybe the possibility of Bivens or similar action explains the reluctance to disclose whether a patent has been consigned to SAWS. Such assignment might provide prima facie evidence of abuse of process.

    2. I feel pretty confident that this will never happen. Let’s remember the facts that set up the case in Bivens:

      “The agents manacled petitioner in front of his wife and children, and threatened to arrest the entire family. They searched the apartment from stem to stern. Thereafter, petitioner was taken to the federal courthouse in Brooklyn, where he was interrogated, booked, and subjected to a visual strip search.”

      That is nothing like the situation here.

      1. That is nothing like the situation here.

        Don’t forget : you’re debating people who are on the record equating the PTO with “the Gestapo” and patent reformers as “jihadist” rapers and killers.

        They can’t tell the difference.

      2. ASHCROFT v. IQBAL (No. 07-1015) tells us that the violation suffered by the plaintiff does not seem to be the controlling issue in the complaint. Rather the plaintiff needs to show the clear intent of the federal official(s) to violate federal laws or regulations.

        link to law.cornell.edu

        What is the point of a face-to-face meeting with an examiner when the examiner will reject the patent application under SAWS despite anything said in the face to face meeting and even if he agrees with the arguments made by the applicant?

        Such a face to face meeting is a complete waste of time. Yet the applicant is not informed that the patent application has been put into a SAWS category, and until recently the USPTO has concealed the existence of SAWS.

        Claiming that SAWS only affects a few applications is not a reasonable defense.

        That argument could justify bringing back racial discrimination. After all only a minority of US citizens would be affected.

        1. Claiming that SAWS only affects a few applications is not a reasonable defense.

          This has been pointed out several times now.

          Apparently Malcolm cannot tell the difference…

          Must be that preference for drive-by monologue instead of actual dialogue thing he has going on.

  5. Open questions to the examiners reading the blog:

    What would happen to you if you refused to follow this program? If you simply went ahead and examined under the law and disregarded unpublished “secret” directives?

    Would there be a cause for disciplinary action? Would POPA back you up?

    What happens to your docket for such items so reported to SAWS? Are allowances made for the increased presences?

    An open question for all Office personal: the SAWS link states that this is only one of many such internal programs. How many other programs are there? How many have you been threatened not to disclose? Do any programs involve more than mere “informing,”

    How much don’t we know?

    1. What would happen to you if you refused to follow this program? If you simply went ahead and examined under the law and disregarded unpublished “secret” directives?

      Nothing.

      All our examinations are under the law. You don’t know what you’re talking about.

      Remember when we discussed Examiner’s pay and count requirements. I told you that proper examination of a patent requires far more money, time and resources than we are given, and your response was I should do my job? I told you in response that if the PTO decided to “do its job” under your definition you would hate it.

      Would there be a cause for disciplinary action? Would POPA back you up?

      No, and they wouldn’t have to. The vast majority of Examiners cannot sign off on actions themselves, so why would there even be an issue? The remaining examiners can sign off, pursuant to the fact that signatory power has always originally vested only in the directors. This isn’t a flat communism, it’s a tiered hierarchy. Your boss can always walk into the room and tell you they think you should do something different, that’s what makes them your boss.

      What happens to your docket for such items so reported to SAWS? Are allowances made for the increased presences?

      Nothing, and not inherently, but allowances can always be made. I can get my SPE to freeze a timer if someone doesn’t call me back the same day if I push hard enough. Again, you’re confusing departing from regular order (something uncommonly done) with violation of some rule.

      Let’s assume I get a gut feeling that something isn’t allowable. There’s no rule preventing me (in fact I’m always encouraged) to seek help from other examiners, or from weekly meetings of rooms of examiners, or to take two weeks and bury myself in one of our several libraries because I’ve convinced myself something is there. Will I routinely do that? Of course not, because my employment (and every normal person’s expectation) is based upon the best examination I can do in a given timeframe, with an understanding that we’ve got hundreds of thousands to do in a year – not a perfect examination. Does that mean I never have a gut feeling that causes someone to get a more perfect examination? Nope, and there’s nothing wrong with that either. Is it that you think we use the library for every application, or that we have a library for show that never gets used?

      Is there a qualitative difference between one examiner getting stuck on a rejection versus him taking it to a room and crowdsourcing a response? Probably, but the people who should be complaining are the ones who don’t get crowdsourcing.

      But please – look my allowance rate is a statistical deviation from the mean, which means someone who draws me has a less likely chance of getting an allowance than other people based on random chance. A handful of good examiners makes a larger difference in allowances than the entire SAWS program. You’re really making too much of this.

      An open question for all Office personal: the SAWS link states that this is only one of many such internal programs. How many other programs are there?

      SAWS is a quality control program. We probably have a dozen.

      How many have you been threatened not to disclose?

      Hahaha. Well the first two rules of our stonemason’s cabal is we don’t talk about fight club.

      How much don’t [I] know?

      Must…resist…softball….

        1. In my experience (and TC), SAWS cases didn’t necessarily have any differences in prosecution at all. That is, when you saw a case that might show up in the Washington Post, you sent a memo up the chain when you were ready to allow it (or sometimes reject it if the rejection might be a big deal). None of the SAWS cases I remember were delayed more than a week or two, if that. As several people have already pointed out, a more significant issue is the random selection of Examiner, since some Examiners may be faster/spend more time/search better/write better/overall examine better than others, and those large differences will manifest in very different outcomes. The Examiner A who finds the 102 reference that Examiner B would have missed may never allow your case because she has better prior art from the start. Or maybe Examiner A is smart enough to write a 103 over your broad claim while Examiner B shoehorns a rejection of the same claim in a divisional into a “broadest unreasonable interpretation” 102 rejection which is reversed by the PTAB while the 103 is affirmed. These differences swamp out any of the quality programs.

  6. The problem is the secrecy. It seems almost ridiculous that this statement would now apply to the USPTO: History tells us that when governments keep secrets, more often than not, something nefarious is afoot.
    Since absolutely nothing would seemed to be gained by keeping this program a secret – especially from the applicant whose application is flagged – why then is it secret? In fact, if it is nothing more than what the USPTO now says it is, why wouldn’t they instead advertise that they have taken special steps to ensure the quality of patents they issue? Sounds to me more like a bureaucracy worried about avoiding embarrassment than assuring quality. I.e., no more “Tarzan swinging” patents. link to google.com

      1. Yes, the USPTO was apparently so embarrassed by this patent, one with absolutely no commercial value and zero possible impact on any form of commerce, that the Commissioner felt it necessary to institute a rexxam on his own. An excellent use of USPTO resources.

        1. An excellent use of USPTO resources

          But the barrel scraper who filed and prosecute the application wasn’t wasting anybody’s time.

          At least nobody ever tried to claim a method of managing a bingo game “on a computer”, or managing a line for going to the bathroom on a plane, or managing a list of movies to rent, or something inane like that.

          1. Wow, you were serious. From 6329919:

            A method of providing reservations for restroom use, comprising:
            receiving a reservation request from a user; and
            notifying the user when the restroom is available for his or her use.

            WOW. Seriously wow.

          2. “But the barrel scraper who filed and prosecute the application…”

            I don’t think you can call that person a barrel scraper. Naive about consequences, perhaps. It was a teaching exercise for children, not an attempt to exclude use of the method claimed.

            (Disclaimer – I do not nor ever have worked in Minnesota, or for any company using that state in its name.)

    1. But, I agree the secrecy is the problem. Blindingly obvious that no government agency should have secret programs like this.

    2. The problem is the secrecy.

      Right. Let’s begin with the easy stuff: require all patent applications to be published within six months of filing; require all phone calls between applicants and the office related to patent validity, ownership or term to be recorded for quality assurance purposes; and require the controlling interest in all patent applications to be made public record prior to examination of the application.

      Of course, this assumes you really care about “secrecy” and not just the ease with which you obtain a patent grant.

      Likewise the complete transcripts of all meetings between the PTO and its “shareholders” should be made available.

      The complete text of all Office Actions and responses should be searchable in the PTO database and the results of those searches should be filterable by both entity, inventor and/or (1) the real controlling interest at the time of statement was made and (2) all controlling interests throughout the history of the application family.

      Then we’ll see whose “playing games”, won’t we?

      C’mon, let’s hear it for “transparency”!

      1. The easy stuff would be the PTO providing its list of SAWS applications.

        That would take them, I imagine, about 5 minutes. Certainly easier than changing entire PTO procedures.

        That said, I’m all for your suggestions! More information is better than less information. Get on it friend!

        1. The easy stuff would be the PTO providing its list of SAWS applications

          It’s all easy to do.

          I don’t have a problem at all with the PTO releasing the list of applications it has identified as “sensitive.”

          But if you think that the typical prosecutor here who is getting his/her undies in a bundle over this fake “scandal” (fact: most prosecutors could care less, for good reason) is open to the suggestions I’ve put forth, you’re absolutely wrong. Their hypocricy is boundless. Let me know if you need specific examples. They are easy to find.

      2. Your aim – not in expectantly – is way off as to what the type of secrecy is problematic.

        That you have no respect for the foundational aspect of Quid Pro Quo shows in your conflation of publication.

        The aspect of recorded interviews has already been addressed.

        The who type of information has no bearing on the what of the patent right, and the fact that your aim there only leads to an ease of “efficient breach” for large entities belies your stated “concerns.”

        And you dissemble about the “ease” of obtaining patents which has no bearing whatsoever in this discussion.

        All in all, nothing on point from you at all.

        Go figure.

  7. The SAWS document released under the FOIA is quite damning.

    link to drive.google.com

    Just consider the topics or issues that will put an application in the SAWS black hole.

    1) Various medical treatments considered perfectly feasible today including those which can prevent or cure HIV.

    2) Applications with pioneering scope. (Aren’t inventors of such technology supposed to be rewarded with a limited monopoly?)

    3) Abortifacients. (Why not hold up treatments for erectile dysfunction?)

    4) Normal temperature superconductivity. (Back in 1977 I worked in a lab specializing is materials that exhibit characteristics of superconductivity at room temperature. A Nobel was granted to a senior researcher in normal temperature superconductivity back in 1987.)

    5) Patent applications with a long pendency. (Why especially if there is a terminal disclaimer? The PTO should be trying to finish these quickly especially if there is a terminal disclaimer that would mean the limited monopoly would only last for a short period while the grant of the patent would eliminate other limited monopolies that should never have been granted. Is the PTO trying to stymie anti-monopoly laws and regulations?)

    6) Other ridiculous categories that may be obvious to people with areas of expertise different from me.

    SAWS seems to be a great way to concede technological leadership to other nations while clobbering the most innovative of US small businesses. One might even identify a potential for a corporatist government in SAWS.

    1. Joachim, the entire point of the SAWS program is to ensure that important developments in the “topics” you mentioned are not hindered by the improvident granting of overbroad patent claims relating to those “topics.”

      the SAWS black hole.

      I’m trying not to laugh but it is funny to see the reflexive, reactionary hardcore patent lovers getting their undies in a bundle over an imaginary “black hole” that affects pretty much nobody and almost certainly none of their own patents or those of their clients.

      You’ve got evidence of some application of yours that went into this “black hole”, Joachim? If so, let’s see it. Let’s the application number and let’s see this incredible earth-changing “innovation” that society is being deprived of because some guys in dark suits and sunglasses at the PTO believe it’s “too big for a patent.” Share it with everyone.

      SAWS seems to be a great way to concede technological leadership to other nations while clobbering the most innovative of US small businesses.

      How on earth do you get from SAWS to this hysterical conclusion?

      One might even identify a potential for a corporatist government in SAWS.

      What in the world is that supposed to mean?

      1. Before I became an engineer, I was trained as an historical political economist. I believe I can discuss the pros and cons of various IP regimes fairly dispassionately.

        The problem with SAWS starts with the categories of sensitive applications. How were they chosen, and who chose them? Did that person have the authority to make the choice? Why not other categories?

        To tell the truth, as I pointed out, even the definition of “submarine” is quite dubious.

        If SAWS means “reject at all costs”, and kick to patent to the PTAB, the Eastern District, or the CAFC, that sounds like an examination “black hole” to me, and I have to ask why even bother with examination at that point. Just tell the applicant to file an appeal to the Eastern District directly.

        SAWS looks like a Star Chamber — something that the writers of the Constitution wanted to make sure would never appear in the USA.

        If you wish to discuss patent applications offline, feel free to write me at Joachim.CS.Martillo@gmail.com, and I will send you an NDA.

        1. Before I became an engineer, I was trained as an historical political economist. I believe I can discuss the pros and cons of various IP regimes fairly dispassionately.

          Believe whatever you want. You don’t sound dispassionate at all, to me. And I don’t see any evidence that you have much understanding of the US patent system or its history, much less its recent history.

          If SAWS means “reject at all costs”

          But it doesn’t. Really “dispassionate” analysis there, Joachim.

          SAWS looks like a Star Chamber

          Super dispassionate stuff, folks.

          1. When I see multiple logically inconsistent rejections of each and every claim in a single office action (after the examiner has allowed every claim), I have to suspect the examiner has been directed to reject the application at all costs.

            It is not an unreasonable inference and does not require much passion to make.

            The PTO public and FOIA SAWS documents describe “strict, arbitrary rulings and secretive proceedings”.

            [Star Chambers. In modern usage, legal or administrative bodies with strict, arbitrary rulings and secretive proceedings are sometimes called, metaphorically or poetically, star chambers. This is a pejorative term and intended to cast doubt on the legitimacy of the proceedings. The inherent lack of objectivity of politically-motivated charges has led to substantial reforms in English law in most jurisdictions since the 17th century.]

        2. Joachim: If you wish to discuss patent applications offline

          I want to discuss them online, in public, Joachim.

          Why would I want to keep our discussions secret, Joachim? Sounds like a Star Chamber or something.

          lol

      2. Hmm, back to one way application of editorial controls…

        Truth hurts, so it must not be allowed to stay

        Because history or something (nothing at all like the history of eight years and running, mind you)…

  8. Just wanted to write and support your position at obtaining more information about this secret, politically-corrupt, non-statutory program. It will be an uphill fight due to the political corruption, but hope you can win one for us. Thank you for being our voice.

  9. To tell the truth examiners are either competent or not.

    If examiners are competent, SAWS is completely unneeded. If examiners are not, SAWS certainly does not address the problem.

    I personally am tired of reading office actions that are not written in anything approximating English.

    An examiner should be able to at least 550 on each of the verbal sections of the SAT. If he cannot, he should be let go.

    If an examiner is making a 101 judgment, he should have basic understanding of epistemology — at least enough to understand that 101 ineligibility is probably incompatible with not allowable under 102 without a careful explanation.

    1. Joachim 101 ineligibility is probably incompatible with not allowable under 102 without a careful explanation.

      How did you reach this conclusion, Joachim? I don’t see any “incompatibility”. Can you explain your reasoning?

      I personally am tired of reading office actions that are not written in anything approximating English.

      That is frustrating. On the other hand, there are thousands of patent applications and granted patents out there that aren’t “written in anything approximating English”. In part, that’s because the drafter of the application can barely communicate in English; alternatively, it’s because the drafter of the application is writing in “legalese”, often with the intent to keep the “invention” as amorphous as possible.

      1. As I understand, 102 forbids the allowance of claims with respect to something otherwise patent-eligible but literally anticipated in the prior art.

        If something is not eligible under 101, it was never eligible under 101, and the previous examiner made a serious mistake.

        Especially, in the case of a patent application for something not eligible because of an intrinsic abstract idea without sufficiently more under the Alice two-prong test to become statutory, the examiner seems to be obligated to identify the exact same abstract idea in the prior art and in the claims associated with that prior art — especially if the prior art is associated with a published patent granted by the USPTO.

        Or the examiner should explain how the earlier applicant got around the 101 issue in the prior art so that his claims could be allowed.

        If I were the examiner and received an application not written in something approximating English, obviously it does not meet the written specification requirement while poor English in the claims invites indefiniteness rejection.

        Good legalese might not merit a Nobel for literature, but it should always be capable of a reasonable parsing according to prescriptive English grammar.

        1. Joachim 102 forbids the allowance of claims with respect to something otherwise patent-eligible but literally anticipated in the prior art.

          Even patent ineligible claims can be anticipated, Joachim. There’s no rule preventing claims from failing under multiple prongs of the statute.

          If something is not eligible under 101, it was never eligible under 101, and the previous examiner

          Previous examiner? Why do you assume there was a “previous examiner”?

          Especially, in the case of a patent application for something not eligible because of an intrinsic abstract idea without sufficiently more under the Alice two-prong test to become statutory, the examiner seems to be obligated to identify the exact same abstract idea in the prior art

          Absolutely false and if you don’t know that already you are either (1) committing malpractice or (2) you are wasting your own money. You can’t protect abstractions (e.g., information) with a patent. It doesn’t matter if the information is new and non-obvious. It’s not eligible subject matter for protecting with a patent. If you need further explanation, spend some time reading the Mayo decision and the threads and comments here addressing that decision. This is fundamental stuff, Joachim.

          the examiner should explain how the earlier applicant got around the 101 issue

          That’s not the Examiner’s job. Besides, we all know that the PTO was applying a kindergartner’s understanding of 101. That approach has been decimated by the courts and rightly so.

          1. While I grant that prior art need not come from a prior patent or patent application, I have only seen multiple logically inconsistent rejections of individual claims in cases in which an examiner cited granted patents as prior art and in which the said examiner at one point had allowed all claims.

            In re Robertson (1999): “Anticipation under 35 U.S.C.S. § 102(e) requires that each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference…If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”

            [To tell the truth I saw no anticipation in the prior art, but if I assume the assertion of 101 ineligibility is true despite the prima facie falsehood of the assertion, the above cite tells me that I must find the abstract idea in the cited prior art, and it matters not whether the element might be an abstract idea (like the Arrhenius equation in Diehr ‘142). Of course, if prior art used some other abstract idea in place of the Arrhenius equation, Diehr’s independent claim would probably have been rejected under 103 instead of 102.]

            1. Joachim, I’m not sure where you work but I hope it’s not a law firm.

              There have been a few Supreme Court cases concerning subject matter eligibility since Diehr. Important ones. You didn’t hear about them? I already recommended that you read and understand one such case.

              the above cite tells me that I must find the abstract idea in the cited prior art,

              That’s nice. As a matter of fact and law, you are citing the wrong case to defend your assertion which was about subject matter eligibility and not anticipation. Here’s your assertion again, Joachim:

              in the case of a patent application for something not eligible because of an intrinsic abstract idea without sufficiently more under the Alice two-prong test to become statutory, the examiner seems to be obligated to identify the exact same abstract idea in the prior art

              Eligibility under 101 require determining whether the claim protects ineligible subject matter. It doesn’t matter if that subject matter is new or non-obvious. See Prometheus v. Mayo and multiple subsequent cases applying the law.

              You can thank me later for correcting you on this very important point. It’s not a mistake that you want to be making in your practice because it will end up costing you or your clients a lot of money.

  10. David Stein: * I’ve had a case where an entire set of 20 claims was rejected based on a single sentence of a single reference, reading almost verbatim: “Computers are known to store and process data.” Full stop.

    Let’s see the claims so we can all share in the sadness about this incredible injustice being done to your oh-so-suffering client. Did you at least send him some canned soup and blanket so he doesn’t starve?

    I’ve had a case that has faced about ten different rejections, based on six completely different references. None of the references has even come close to the subject matter of the claims

    Let’s see the claims and the rejection.

    I’ve had a few cases where the examiner *and SPE* didn’t even pretend to care about the invention. The interview went like this: “You’re claiming some kind of variation of a database processing engine. Here’s a 50-page reference teaching a generic database engine… we’re sure it’s kind of the same thing to whatever you’re claiming. We’ll just cite randomly to paragraphs throughout the reference. What’s that? Be more specific? Nah, we don’t want to.”

    Why should they be more specific? Is there something unexpected about a computer that can looking up some information in a database? Let’s see the claims.

    1. MM>>Is there something unexpected about a computer that can looking up some information in a database?

      So again we just have the gross ignorance of MM. You have shown us that you don’t understand information in the least saying that all functional claims are the same and all can be done by a computer. I proved that is not true.

      Now you are saying all databases are basically the same and it is fine for the burden to be shifted to the applicant from the PTO.

      Just nonsense. Please Dennis verify him. This board starts to become readable and worth putting time in when he isn’t posting. But, he is a blight.

      1. NWPA : Now you are saying all databases are basically the same

        For the purpose of the patent system the information stored in a “new” database is irrelevant, just as the information stored in the pages of a “new” book is irrelevant. It’s just an old computer and old book, respectively. As manufactures distinguished structurally from the prior art, such manufacturs were patentable a long, long time ago. But they can’t made “new” (for patenting purposes) merely be reciting “new” information content like a “new” look-up table or a “new” data structure.

        Please Dennis verify him.

        Go ahead and “verify me”, Dennis.

      2. NWPA This board starts to become readable and worth putting time in when he isn’t posting.

        It’s very important for NWPA’s very serious and thoughtful comments to be readable without any objection from other people, Dennis!

        How do we know that?

        Because NWPA said so.

        Deep, thoughtful stuff.

  11. Dennis: the review cannot be directed at avoiding USPTO embarrassment but rather to ensure that the issued patent complies with the law of patentability. Avoiding embarrassment will be a secondary benefit.

    Did David Kappos ever admit to being embarassed by an invalid patent that was granted under his watch? If so, I missed that.

    It would be a great improvement if the people running the PTO could actually be embarrassed by the massive reams of junk that they’ve been pumping out of the office every week for the past 15 years or so on behalf of The Most Important People Ever (i.e., the “do it on a computer” crowd). I’m not convinced that’s happening.

    As I mentioned above, the real problem here is the Office’s continued secrecy in this front. We do not know which applications have been chosen, why they were chosen, or whether the level of review follows the law.

    We can take a pretty good guess, though, can’t we? I don’t see any reason or evidence to assume that any law is being broken when an agency engages in some self-awareness about the impact of its actions on the public — you know, the vast overwhelming majority of people who don’t own patents and who never will but whose rights are limited every time a patent is granted. On the contrary, such a change in the PTO’s operations sounds like a positive development.

    Because nothing is done on record

    “Nothing” is done on the record? Dennis, you are making it sound as if rejections are being handed out without any explanation. That’s not happening. At least, nobody’s provided any evidence of that happening.

    applicants likewise have no recourse regarding potential political capture of the examination process.

    Let’s be frank: with respect to most of these applications, which are surely in the software or computer-implemented “arts”, the “examination process” and entire agency was captured a long time ago.

    How do we know that? Just look at the mystified reactions of the entitled folks who can’t believe that their lollipop was taken away. They’ve never had to think very much before. Working embodiments? Data? Oh noes! That sounds really hard. It must be time to complain about the “Gestapo” and the “Death Squads” again.

    1. I see the blight has returned. Just look at these comments by MM. They include name calling, gross characterizations with no substance, no fair structure in the sense of moral or ethical considerations, etc.

      A blight.

        1. NWPA Please just verify that he isn’t being paid to fill this blog with nonsense.

          Dennis, please verify that you value NWPA’s insightful contributions to this blog more than mine.

  12. David Stein: I just don’t see SAWS as that big a deal. The internal review process – the actual rationale behind the office action – is already arbitrary and behind-the-scenes. Why should one more layer of review matter this much?

    Because every time the PTO rejects a patent, god kills a kitten.

    Seriously, David, you are absolutely correct: “SAWS” is not a big deal at all.

    For the past 15 years the PTO has been consistently pumping out orders of magnitude more junk than during any other time in the history of the country. That’s a big deal.

    For the past 15 years the PTO has been coddling software patent applicants with mindless judicially created exceptions, sleeping at the wheel, and turning the spigot up to 11 because that’s what it’s “stakeholders” want (never mind the public who has to clean up the mess). That’s a big deal.

    Now the USPTO makes a feeble effort to ensure that a tiny, tiny, tiny fraction of the worst applications presently pending are rigorously examined while it continues to bend over backwads and look the other way in 99% of the other cases? That’s not a big deal. It’s a bit of a welcome change but, ultimately, just a thin band-aid on the patent system’s gaping wounds.

    1. “Coddling” and that “judicial exception” thing have been thoroughly debunked.

      See the archives for my simple Set Theory explanation.

      Of course, Malcolm has been repeatedly invited to actually discuss the points I put on the table, and he has constantly run away instead.

      Anyone really shocked that he once again ploys his internet style shout down by yet again posting debunked material?

      1. “anon”: “Coddling” and that “judicial exception” thing have been thoroughly debunked.

        Not at all.

        internet style shout down

        Your “internet style shout down” thing has been debunked.

        LOL. Fun game, “anon.”

  13. The comments here are hilarious.

    I mean, nobody could have predicted that the most meager efforts of a captured agency to right itself would be greated with louder and louder howls of “conspiracy!” from the “stakeholders.”

    Remember, folks: the people whining and crying about an alleged “lack of transparency” in the manner with which the PTO handles a tiny, tiny fraction of the worst applications out there are the same folks who are curiously silent or rabidly vocal in their protests when it comes to recording Examiner Interviews or identifying the controlling interests of a patent application.

    You see, the wealthiest and most privileged people in the world need their very special patent rights right now. They’re very important and very serious! It’s all about “due process.” Hence their deep wisdom about “star chambers”, the “Gestapo” and “jihadists.”

    LOL

    1. >You see, the wealthiest and most privileged people in the world need their >very special patent rights right now.

      Except that is backwards. The wealthiest and most privileged (big CORP) are the ones trying to end patents…

      No credible person disputes that.

      1. NWPA: The wealthiest and most privileged (big CORP) are the ones trying to end patents…

        There is no Big Corp on earth trying to “end patents.”

        No credible person disputes that.

        In fact, no credible person would say what you just said.

        The wealthiest and most privileged

        As you’ve been told before, I have nothing to do with “Big Corp” and I have contempt for the behavior of most large companies (including Google or whoever else you believe is “behind” reforming the patent system).

        Like all patent attorneys, I do have more money than most Americans.

        But I can speak for my many, many friends and family members who have less money than I do and who are the furthest thing from “wealthy and privileged.” They all agree that the system needs fixing. And they all understand that people like you are “the problem.” And they understand that you always will be.

        The great thing about the Internet is that people like you who can’t stop their lips from flapping and who compare patent reformers to “jihadists” are right out in the open. And so are the people who disagree with you. In other words, the public has much more involvement in the patent system than ever before. And that’s never going to change. In fact, genuine public involvement in the patent system is just getting started. That’s bad news for people like you.

        Get used to it. 2015 is going to make 2014 look like a junk patent luvver’s Super Bowl party.

        1. Sure MM. Just deny reality again. We start from base zero with you.

          I know. I know. Prove everything to you all again.

          Really Dennis? This is a blight. The discussions start to get to where other participate, and it appears there will good intellectually discussions (that include lots of anti-patent sentiment) then MM comes back and just blasts the blog with nonsense.

      1. That said however, I have to strongly agree with footnote 1 in the dissent. Just because these parties reached agreement regarding whether they felt that claim construction involves subsidiary factual findings doesn’t mean that it actually does. Other parties remain free to contest that in the future.

        That said, perhaps the majority did rule correctly for the parties before it. Though that is a pretty big screw up for the law as a whole. I do dislike when that happens.

          1. “anon” Care to explain how the decision is a “pretty big screw up“…? Just saying so is, well, pretty empty.

            Too funny.

            Before you answer, 6, try to imagine how “anon” typically responds to benign requests for clarification of his own comments.

            1. And try to remember that no one – and I do mean no one – has put up more on point and accurate pincites than I.

              (You sort of left out that important fact, Malcolm)

            2. Here’s a thought Malcolm, instead of tr011ing me (and doing so poorly), why don’t you attempt to actually say something that adds to the conversation? Something based in law, something based in fact, would of course be preferred.

          2. “Before you answer, 6, try to imagine how “anon” typically responds to benign requests for clarification of his own comments.”

            Lol I know right MM? I should just tell anon “asked and answered” or some such. Maybe just “answered”, since he didn’t actually ask yet though I provided the answer preemptively.

            Here’s the answer for you as to why it is a pretty big screw up for the law as a whole anon: The first sentence of FN 1 in the dissent.

            Or the way I put it:

            “That said however, I have to strongly agree with footnote 1 in the dissent. Just because these parties reached agreement regarding whether they felt that claim construction involves subsidiary factual findings doesn’t mean that it actually does. Other parties remain free to contest that in the future.”

            Notably I should say that it may be the office itself that wants to contest that. The USSC, in holding as it does here, essentially puts the office on the hook for making a bazillion more factual findings a year (that it can be reversed on btw). Practically every claim limitation arguably now requires a factual finding just to contrue it. I don’t know if the system can bear that weight.

            1. Thanks 6. Footnote one seems to hold that a dissenting Justice can unilaterally limit the holding of a case all by himself (in a footnote no less).

              That you emphatically agree with the footnote says little of you and even less of Justice Thomas.

              Truly sad.

              1. “Footnote one seems to hold that a dissenting Justice can unilaterally limit the holding of a case all by himself”

                Um no Mr. I’m not a lawlyer. FN 1 “holds” or rather “states” that the decision is limited to the parties before the court in so far as the court is just glossing over the fundamental issue that must be addressed before they even get to the issue that they actually decided. And as such, others can feel free to bring a case to raise that issue.

                1. Brushing aside the cheap (and incorrect) insult, hear is footnote one (broken into three points):

                  The majority argues that we are bound by petitioners’ phrasing of the question presented and by respondents’ concession at oral argument that claim construction “will sometimes require subsidiary fact finding.” Ante, at 10–11.

                  But the parties’ stipulations that claim construction involves subsidiary factual determinations, with which I do not quarrel, do not settle the question whether those determinations are “findings of fact” within the meaning of Rule 52(a)(6).

                  And to the extent that the majority premises its holding on what it sees as stipulations that these determinations are “findings of fact” for purposes of Rule 52(a)(6), then its holding applies only to the present dispute, and other parties remain free to contest this premise in the future.

                  Your problem, 6, is that this footnote is the premise of his dissent based on what is and what is not a “fact” under Rule 52 – and ONLY carries if the rest of his view carries.

                  The rest of his view does not carry (hence, it being a dissent).

                  Sorry Charlie, you lose.

  14. Based on my personal experience, all old applications having pre-GATT filing dates are subjected to this extra scrutiny, which might seem normal, except that examiners and their supervisors misinterpret the extra care guidance to mean “do everything you can to not let these see the light of day”. Fabricate a double patenting rejection to kill all remaining term. Make a ridiculous 101 rejection based on an abstract “abstract idea”. Make a 112 “unsupported” rejection. Stretch prior art as far as you can to make an art rejection based on “broadest reasonable interpretation”, even if that means ignoring the specification. In other words, “find something.

      1. This sounds like a good idea, but in reality, it’s a very long process. I keep thinking about some company suing over the current crop of Alice rejections. But this means if you start today with the appeals process, you aren’t going to get sent to the Board’s queue for say six months or so. Then you’re going to wait 3+ years (expect this to go up, since they’re going to be overwhelmed with Alice cases). You’re looking at about 4 years before you can file suit. Then, how long will a lawsuit take before gets to and through the CAFC?

        1. PatentBob, the Alice rejections are perhaps a special case. What most here complain about is that they can never get their patents out of the PTO. But they CAN appeal from an application twice rejected, and can file suit if they are dissatisfied by what the Board does. Thus, for these applicants, the appeal/suit process is a way out.

          Let me assure you the Office does not want to be involved in these kind of lawsuits. Thus, if the applicant appeals a nonfinal having twice been rejected with every intention to take the matter to court, the Office just might get serious because it will have to defend itself in court.

  15. I am pretty sure that one of my applications years ago was in this program. It was transferred to me and was in the Office for over 10 years. And the client who was huge international tech company wanted the patent and had paid an enormous amount to date.

    I knew something was up because the examiner just couldn’t maintain a straight face about the rejection. He finally agreed with me that the rejection was bad, but rather than an allowance he said “his supervisor” thought he had found new art. I said, OK, let me speak with him about the new art. The examiner said no. He would issue a new office action, which he did after something like 6 months. This continued in this fashion for years until I left the law firm. But each time I shot down the examiner he would say, no I cannot allow this because my supervisor thinks he knows another reference. Nightmare.

    Wouldn’t let me appeal it to the board (maybe they were part of it too) and wouldn’t allow it. And, it seems everything took an extra long to happen. Even an interview was delayed like month. The examiner had a very lame excuse for it too.

    And, this application would have implicated large segments of computer hardware. But, there wasn’t art out there, and it wasn’t one of these new claims deals. The claims were pretty much the original claims sitting in the PTO for 10+ years.

    1. My problem with this whole thing is transparency and fairness. The PTO shouldn’t use its powers to thwart you.

      There is nothing wrong with the PTO using extra person power to find rejections for applications. Nothing. That is there job. But, if using their bureaucratic powers and internal procedures to hamper you, then that is wrong and whoever does this should be investigated and fired! Fired! Not disciplined, but fired.

      So, the committee should come clean and be part of the rejection. Something like, the rejection signed by the committee of people that did the work for the rejection.

      There is nothing wrong with the PTO deciding that they need more than one examiner to work on an application. Nothing. But, again, putting an application in the category of “Do not allow no matter that we don’t have the art” is very wrong. And gumming up the application is very wrong.

      And, question, is the PTO so incompetent that they can’t get people that can come up with good rejections? Seriously.

      This is one of the problems I have with Lee. She has no experience with prosecution so how in the world can she even begin to understand these issues at anything other than a high level concept? She lacks the experience to find practical workable solutions.

      Let’s not forget that Lee’s primary job is managing 8,000 examiners. That is the big show at the PTO.

      1. Also, if the PTO is going to take extra time to examine the application because of its importance then they should make that part of the record.

        You know, we have clients real companies that are paying real money. Not PTO fun money where they can just bump the fees.

        It is a form of felony for the PTO to be putting an application in a category of never allow and not tell the client. It is really is a felony. They are stealing thousands of dollars of the client’s money.

      2. “Let’s not forget that Lee’s primary job is managing 8,000 examiners. ”

        You wish. Even David K, champion of all that is good and holy (in your eyes) barely did any “managing” of the examiners.

    2. i find it interesting that in computer claims land there are tons of these “would have implicated large segments of computer hardware” claims and it is apparently just wonderful. was your “invention” really an invention, or was it claimed craftily (probably light on the pertinent disclosures as well – like most play the game)? bet it was the latter and not the former, which is why the pto was choking on it. in fact, its a safe bet that it was a nice long convoluted functional language nightmare. which is exactly what it was meant to be.

      but functional language fishing expeditions are still legal this week, right? lol.

      in other arts, being crafty in claiming a hinge in different words (functional or not) draws less than a positive response. here in computer land, its just business as usual.

      the games are getting a little old.

        1. when i worked at the office many art units forced the examiners, under threat of error, to find the literal word for word recitations of the functional language used in claims. in this world, finding the hammer that was capable of being used to hammer screws wasnt enough – you actually needed to find a reference that taught driving in screws with a hammer.

          to say that this caused a little bit of a problem among some elements of the examiner corps was an understatement.

          all this did was feed into an expectation that functional language fishing expeditions are fruitful. nowadays all one needs to do is flip through the newest pgpubs to see the thousands of fishing expeditions being launched as a result. ultra-broad independent claims that cover a basic processor, a basic camera, a basic cellphone…

          but thats just a part of this “business” isnt it?

          1. Your taint and bias is clearly evident.

            That Vast Middle Ground is fully sanctioned by the law – the words of Congress under the changes made in the Act of 1952.

            You have a problem with that? Call your elected representative.

            Until then, deal with the actual law.

            (btw, love your latest example being outside of them “computer claims land” – thanks for proving my point)

          2. “when i worked at the office many art units forced the examiners, under threat of error, to find the literal word for word recitations of the functional language used in claims. in this world, finding the hammer that was capable of being used to hammer screws wasnt enough – you actually needed to find a reference that taught driving in screws with a hammer.”

            It’s fin absurd. I had to deal with that nonsense the other day. They interpretate the claim such that the “function” is actually a “step” that needs carrying out. That sort of “interpretation” just renders the whole claim one big ol’ mixed claim type. A product-method. One day shortly people will catch on to this game and throw that sht in the court blender.

      1. First, it implicated computer architecture. Pretty much every computer would have read on the claims.

        This latest judicial activism where “functional claims” (whatever in the world that means) are blamed for everything has no merit. The question is how are the claims viewed by one skilled in the art. A nice cartoon was posted on here recently that illustrated that point regarding identifying different things in an image. So, you cannot remove a person skilled in the art from interpreting the claims. Please stop the nonsense regarding “functional claims.”

        Second, I don’t think this application was a game. But, more importantly, I know if I were examining this application that I could handle any game that came my way.

        Do you get that? It is the PTO’s job to figure out how to handle the applications and deal with the problems that come up fairly and in a professional manner.

        Benson started all this. Benson was basically a case that said we don’t think the PTO can do its job, so we are going to make up some things and try to exclude all information processing.

        The PTO should buckle down and do its job. The PTO should go back to TSM.

        1. “It is the PTO’s job to figure out how to handle the applications and deal with the problems that come up fairly and in a professional manner”

          that is how it currently is and that is why it is terribly broken.

          i have suggested, in the past, that attorneys need skin in the game for this to work.

          and how you do it is such:
          loser pays plus joint and several liability for agents/attorneys of an applicant if the claim(s) of the asserted patent in question is/are found invalid as obvious or anticipated or indefinite.

          that will end the problems. you will have an examination system where both sides are motivated to find the correct and definite scope of the claims (if such exists).

          until this happens, examination will just be just be gamesmanship coupled with finger pointing by the bar.

          1. That is absurd. Again, we have someone trying to shift the burden of examination from the examiners to the attorneys.

            Get it. Your job is to examine the applications. That is what the statute says. “Unless”. Full stop.

            That is the way it should be. The PTO has to be the expert. You have the flow and you have the knowledge of other inventions that may even be not known to me.

            See it is this attitude of complaining rather than coming up with solutions that is the problem.

            Be professional. Be the expert. Take responsibility for examining the application. The PTO could solve all these problems. I would suggest that the PTO start outsourcing some of the work.

            1. our current system could have worked if OED was proactive and curbed the abuses.

              unfortunately, that ship sailed when the patent bar dues idea got tanked.

              how can you ethically file an application with claims that you know are taught by old tech? the answer is you cant, but that doesn’t stop thousands of apps a year from doing it anyway. oh you say, knowledge requires proof, and you cant prove that i know… this is not the logic of a professional, but it is the prevailing logic of today in the patent bar.

              this is the dark underbelly of the patent bar, and its time it got some light on it.

              regardless, without a proactive OED, the only way to fix this mess is to put some skin in the game. sadly.

              1. Patent bar dues…

                Blame the applicants

                Talk about games getting old…

                Let me guess – you are a lifer at the Office…?

                Methinks a little “shine a little light” is much more pertinent a comment to be made on the Office antics, don’t you?

                1. reality cuts both ways anon… OED just doesnt enforce the bar’s side of it.

                  frankly, without OED playing its role, registration is merely a formality without any duty attached to it.

                  i will ask again: how does one ethically prosecute an application with claims that are known to be taught by old tech?

                  you do know you have disclosure duties as well as the applicant, right? has such a large portion of the patent bar never used a processor, display, cellphone, etc…?

                  its a joke.

                  but thats what we have – a one sided examination system that relies on a policeman asleep at his desk. a joke.

                  how could anyone wonder why this is so messed up?

                2. If the invention is so old, then it should be easy points to reject.

                  And yes we do have disclosure requirements which I adhere to very closely and take very seriously.

                  But, what you don’t get is that we deal with all sorts of stuff. That is the whole idea behind the PTO. You guys be the experts in narrow categories. Sort the applications to the right person. Examine the application.

                  You seem to be saying wahhhhhhhhhh……we don’t want to do our job. You have an easy job. Just learn your art unit and you can easily police the inventions.

                3. “If the invention is so old, then it should be easy points to reject.”

                  Right there… Right at this point you are demonstrating the current mind-set of the patent bar.

                  Now reconcile that with 37 CFR 10.85 (to just pick out one of the sections this conduct would violate).

                  You just don’t get it do you? This behavior is unethical. *not* ethical. It has never been ethical and it will never be ethical.

                  Can you hear me?

                4. Do you get that the patent attorneys may not know that the applications are old?

                  Do you get that this “problem” you are attempting to highlight is at best a very minor side-show.

                  Again, if you do your job poor applications should be easy points.

                5. “Again, if you do your job poor applications should be easy points.”

                  Again, if OED was doing its job “poor applications” wouldn’t happen.

                  But they don’t, so some skin in the game is needed.

                6. demonstrating the current mind-set

                  LOL – talk about old games…

                  You need a refresher on why Tafas succeeded.

                  It it your job to examine.

                  Do your Fn job.

                  (and you don’t hear us: we do abide by our our ethical duties – you don’t like how thin that duty is, though; or how some may not in fact be following that duty – and yes, I do NOT begrudge your complaining about those people, but you are trying to shift the focus when the focus is rightfully on the Office not doing its job properly.

                  As I said, if you spent the energy that you spend complaining about the bar pointing the finger at bad examination on actually removing bad examination, you would not have nearly that level of fingers pointing at bad examination.

                  Can you hear me?

                7. “Do you get that the patent attorneys may not know that the applications are old?”

                  1) you needed a basic level of engineering/science background to get a reg num.

                  2) the people who are prosecuting those applications with ultra broad independents are *wait for it* pretending not to know.

                  3) it is not uncommon for an attorney to prosecute an initial set of claim(s) that are broad enough to cover a previous application the attorney worked on. luckily for the attorney, as we both also know, it is very difficult to determine that unless you pull file wrappers apart.

                  totally broken. this is what you get in this system.

                8. “(and you don’t hear us: we do abide by our our ethical duties – you don’t like how thin that duty is, though; or how some may not in fact be following that duty – and yes, I do NOT begrudge your complaining about those people, but you are trying to shift the focus when the focus is rightfully on the Office not doing its job properly.”

                  its nice to know that you think your duty is thin.

                  ever work on any of those ultra broad badly translated foreign originated applications that cover everything AND the stars AND the moon in the independent? im sure you know exactly what im talking about.

                  the second you filed one of those cases with your name and reg num on it (but but the client made me do it!) you were in breach of your ethical obligations.

                  thin indeed. the problem is how thin the patent bar feels it is.

                9. You assume too much.

                  I have not – nor ever have – hidden behind a “the client made me do it.”

                  Not ever.

                  And the problem is not how thin the patent bar “feels” the duty is. That is merely your feeling. Sorry, but your opinion on this just does not carry weight.

                10. you said: “we do abide by our our ethical duties – you don’t like how thin that duty is”

                  just reminding you of your own words kiddo.

                  thin indeed. what nonsense.

                11. Great – you reminded me of my own words.

                  Do you think that you have made some great point in doing so?

                  You have not.

                  My own words remain true. Just because a duty is thin does not make that duty unimportant, nor does thinking that duty thin mean that the duty is not followed.

                  The only nonsense here is your suppositions that I do not follow my duty, that your “feelings” somehow change the duty, or that such a duty is a driver for the system “being broken.”

                  It just is not so. Stop playing the “blame the applicants” game.

                12. thin. thats a nice word to sum this up. thin.

                  remember that guy who filed the app on swinging on a swing sideways and the world had a big funny at the pto’s expense for it? What ethical obligation(s) did he breach in doing so? Did OED sanction him for it?

                  yes, it is quite thin. very thin in fact. at least in practice.

          2. One serious case of the “wah’s”…

            If you spent as much time actually examining as you do whining, you would remove our ability to “point fingers.”

            That’s kind of the point: do your Fn job.

        2. “First, it implicated computer architecture.”

          “computer architecture is a set of disciplines that describes a computer system by specifying its parts and their relations.”

          It implicated a set of disciplines?

          “Pretty much every computer would have read on the claims.”

          Interesting, and by submitting the claims you were in breach of your duty?

          “So, you cannot remove a person skilled in the art from interpreting the claims.”

          Can’t remove those imaginary men! Can’t be done!

          “Do you get that? It is the PTO’s job to figure out how to handle the applications and deal with the problems that come up fairly and in a professional manner.”

          Hilarious. But when it does figure out how to handle the applications and deal with the problems that come up he’ll be sure to whine to the board and the CAFC.

        3. The rampant – and downright petty – dicta in Benson is pretty damming.
          Nothing like leaving judicial activist fingerprints all over the place.

      1. This was a few years back, but as I remember it I told the examiner and SPE I was going to appeal and they said, well, if you do we are just going to bring it back into prosecution with a new rejection.

          1. Ned, in several places of this thread you are pressing hard for the “appeal-then file suit” route out of the executive agency.

            Here, can you add to the statement that you think that an examiner re opening prosecution with a new (and for argument’s sake, bogus) rejection, somehow violates the statutory right to appeal?

            I just think that overall you are not grasping the administrative agency gaming level (nor, as committed elsewhere, why the APA is so pertinent here).

            I really think that you need to recognize that there is more than one tool in the toolbox for making sure administrative agencies do not run wild.

      2. I spent many hours arguing with these guys. It became clear to me the game was rigged. The examiner kind of laughed at me one time and said something like it is never going to happen.

    3. I had the same experience. Appealed it and every time, the examiner just filed a different rejection to keep it out of the appeals board.

      Once the board finally got it, they basically told the Examiner they were not going to accept any more of his shinanigans and that he basically had to allow it, that they were not going to sustain any further rejections of the claims. It was the oddest appeal decision I ever got.

      Ten years tacked onto the end of the term. Probably top 0.001% of term extensions. But of course, by then, the technology was much less valuable, so they got what they wanted.

      1. RPA, regardless of the internal rules, the statute gives an applicant a statutory right to appeal. Rules cannot trump statutes.

        If the examiner does that again, petition the Director, then file suit if he does not tell the examiner to stop.

  16. “requirements that examination be done on the written record”

    A common misconception. Nothing states that the “examination” must be done on the written record. Only the action taken must be on the written record. They really should update the old CFR to help the everyman understand this.

    1. I wonder where that misconception comes from…

      …the action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

      This language is NOT optional.

      By the by, in legalese, “actions” include purposeful non-actions and failure to actually examine.

        1. Focus 6 – focus.

          Do you really think that examination is not covered by the word “action?”

          Don’t be that Rob Lowe (I can’t stop saying “Bro,” bro).

          1. “Do you really think that examination is not covered by the word “action?””

            I don’t just “think” it. I know it. Because I know what I’m doing when I take an official action on behalf of the office. We typically do those actions (like issue rejections/objections)in these things called Office Actions. That’s why they’re so named.

            When you get behind the wheel of being an examiner for a day a lot of this will begin to make sense to you.

  17. Political capture?

    By the executive?

    This is somehow, unconstitutional, a violation of due process, or what?

    The executive IS political. That is WHY we have an independent court system to protect rights.

    If an applicant is reamed by the PTO in an ex parte examination, he or she has a right to a trial de novo.

    In an IPR? The PTO is arguing (Versata) that its reviews of jurisdictional facts are final with no appeal. The views of the PTO are, in the words of the Supreme Court in Crowell v. Benson, alien to our system of government:

    “The recognition of the utility and convenience of administrative agencies for the investigation and finding of facts within their proper province, and the support of their authorized action, does not require the conclusion that there is no limitation of their use, and that the Congress could completely oust the courts of all determinations of fact by vesting the authority to make them with finality in its own instrumentalities or in the Executive Department. That would be to sap the judicial power as it exists under the Federal Constitution, and to establish a government of a bureaucratic character alien to our system, wherever fundamental rights depend, as not infrequently they do depend, upon the facts, and finality as to facts becomes in effect finality in law.”

    Crowell v. Benson, 285 U.S. 22, 57 (1932).
    link to scholar.google.com

    To me, the courts are the only protection we have against arbitrary, capricious actions by any political body who deals with one’s legal rights. We cannot rely on a bureaucratic agency to be “fair” or even “legal.” They are not. Nor can they be. They are political.

    1. Ned,

      The APA is there in an attempt to being them to be fair and legal.

      Like it or not, we do expect more out of that “political” body.

      1. anon, the framers put the ultimate question of the protection of one’s rights in the court system for a good reason. It is almost laughable that we are complaining that the executive is political. What did you expect?

        1. Ned,

          You seem to be missing an entire chapter of US legal history concerning the rise of the Fourth Branch of government – the administrative state (the reason why the APA is so important here).

            1. Great maxim Ned.

              But how does that relate to the current discussion or your seemingly want to ig nore the entire body of the Administrative Procedures Act?

              Please return to the point under discussion.

              1. Anon, we are complaining here about an agency that seems to live by the rules but actually is defying due process.

                The court system is the final resort to stop such abusive practices. This has nothing to do with the role of the PTO in examining patent applications prior to grant.

                1. Your reply here does not make any sense.

                  The Office only has one role that even possibly applies, and it’s actions here must have something to do with that role of examining patent applications prior to grant.

                  Must, I tell you.

                  Now whether or not the internal mechanisms they have created in the shadows defy due process (or other APA standards), that is an on point question – but one that is entirely related to its examination role.

  18. My understanding from the original whistle-blower article was that SAWS status was also conveyed to the Board in the event that a SAWS case was appealed. Can anyone confirm whether this is true? Because if it is, SAWS goes far beyond mere “supervisory review” by the Director. If the Board is being roped in, it represents a pernicious distortion of the due process safeguards of the APA. It would be nothing less than a secretive attempt to warp the responsibility of the Board from reviewing rejections based on the law to one based on a review having a preordained outcome, based on a concealed extra-legal subjective conclusion that an application is on a secret enemies list of “sensitive” subject matter, however the latter-day Nixons in the PTO happen to define that.

    1. I wonder if that rather (infamous) guy that had to sue the Office in an attempt to have his applications actually examined has filed a FOIA request related to the SAWS (or perhaps one of the other “many” such programs)…

    2. …but more to your point Tourbillion, the Article I court that is the Patent Trial and Appeal Board is inordinately too close to the executive agency as it is, without any SAWS taint.

      1. Yes – but in 35 U.S.C. 6 Congress explicitly made it that way when they statutorily put on the Board the Director, the Deputy Director, the Commissioner for Patents, AND, oddly enough the Commissioner for Trademarks. Perhaps this was simply another law no one read on the ground that the best Periclean legislative strategy is pass the scribblings of your clerks to find out what is in them (the scribblings, not the clerks. We already know from Jon Gruber what’s in the clerks).

  19. Interesting write-up on the FOIA exemptions at:

    link to foiadvocates.com

    Let’s just say that the Office trying to shoehorn itself into an exemption (particularly from a request from a first-party requester – as in the original stories that broke) is more than a bit tenuous.

    Aside from the odd Ninth Circuit rule-swallowing notion, I just don’t see a chance for the Office to prevail if pressed hard.

    1. The PTO asserts that SAWS is internal deliberations which are shielded from FOIA. Whether or not SAWS is strictly “internal deliberations” the PTO is creating a serious PR problem. If SAWS is as benign as touted, why not be more forthcoming?

      1. That’s why I provided the two links Simon – the arguments being made by the Office are rather weak (and yes, you do have a point that even aside from their arguments, even if the arguments were better, they are digging a Star Chamber PR nightmare)

        Maybe someone will ask Miss Lee about this…?

  20. We do not know … whether the level of review follows the law.

    What laws, pray tell, do you speak of which regulate the Office’s review of an application for the presence of sensitive subject matter?

    Of course examination is done on the record – but then examination is an official statement of what is or is not patentable. Merely reviewing a case for the presence of “sensitive” content and giving the case another set of eyes isn’t examination – that’s merely supervision. Are you arguing, Prof. Crouch, that the PTO should not supervise examiners to ensure that their work doesn’t embarrass the government?

    Because nothing is done on record, applicants likewise have no recourse regarding potential political capture of the examination process.

    Recourse for what? Again, merely reviewing a case for the presence of “sensitive” content and giving the case another set of eyes is only supervision of the examiners – it’s not something that requires recourse for an applicant. If an adverse decision is made against the applicant, they hear about it in a written Office action.

    What a shameful load of sensationalism, Professor.

    1. Respectfully, I see it differently. The original allegations against the program were that a SAWS application was subject to repeated review by almost endless numbers of USPTO employees so as to prevent grant indefinitely. At some point “supervision” will cross the line into “affects substantive rights.” As to whether this program amounts to political capture of the examination process, I think the good professor is saying that the USPTO has been so secretive with SAWS, that there is no way for an applicant to ensure there is no political motive for delaying grant indefinitely. If you don’t know your application is in the program, how can you monitor the situation to protect due process? Finally, if the delay is not intended to be indefinite (read permanent), why not reject the application and take it out of bureaucratic limbo? Something about this program just feels “off.” I can’t put my finger on it, but I have a feeling when the truth comes out, it will be embarrassing to the Office, more so than any “sensitive” application that may hit the media.

      1. Not, there has to be a way for an applicant to have the PTO act twice on an application so that he might appeal to the Board, and from there to a district court. I think Hyatt has just such a suit pending where PTO provided no prosecution at all for a decade or more.

        We have to recognize that the Office is not a court but a part of the executive branch. It is therefor political and there is nothing we can do about that. But applicants and patent owners do have rights. That is where the courts come in.

        1. But to get to the non-political branch, the applicant must exhaust all administrative remedies. If an application is in this program, it’s very often not even getting office actions, from my understanding. Thus, you never get a chance to go to court. It all reeks.

    2. Some of us are just not down with a secretive process in which certain applications undergo a root canal because an unidentified bureaucrat applies a judgment with no published standards in a process that is the subject of concerted agency-wide concealment with no known appealable recourse.

      Just “double secret supervision”, right? Or are you practicing for writing for The Onion, and I just missed the satire?

      1. > Some of us are just not down with a secretive process in which certain applications undergo a root canal because an unidentified bureaucrat applies a judgment with no published standards in a process that is the subject of concerted agency-wide concealment with no known appealable recourse.

        OK – but taking SAWS out of the picture, consider the already-baked-in variance of this process.

        Some applications are almost exclusively reviewed by the examiner (especially a primary), and no one else does more than glance at it.

        But most applications are also reviewed by a random assortment of:

        * A primary examiner who’s overseeing a junior examiner;

        * The examiner’s SPE;

        * A SPE from a totally completely different art unit who’s covering for the actual SPE;

        * A SPE from the USPTO Patent Training Academy, if the case is assigned to an examiner in training;

        * A second examiner, primary examiner, and/or SPE (if the case gets transferred, the art unit gets reorg’ed, or an interference is declared);

        * The Quality Assurance Specialist (QAS) of the art unit;

        * One or more additional admins for the same art unit, e.g., a three-person panel if you submit a pre-appeal conference brief, or when the USPTO decides to implement one if its occasional “extra pair of eyes” review processes;

        * The director of the technology center;

        * A higher-level admin in the Office of Patent Quality Assurance (OPQA), if the application is randomly flagged for review, or if the examiner’s work is under evaluation for promotion to primary status; AND/OR

        * A member of the Office of Patent Examination Policy, if your case happens to relate to or even resemble a patent that achieves public visibility for some reason.

        As your application travels through the USPTO, it will encounter some and possibly several of these people. It will only reach an allowance if this random collection of people reaches a consensus.

        My question is: Does it really matter which, or how many, of these people are involved?

        Theoretically, everyone is playing by the same set of rules, and looking at the same references. One would hope that having more people on board is actually better, as mistakes can be caught (“hey, Mr. Examiner, your reference doesn’t actually say what you want it to say”). And regardless of who looks at it, the office action that you receive will probably look nearly the same.

        I just don’t see SAWS as that big a deal. The internal review process – the actual rationale behind the office action – is already arbitrary and behind-the-scenes. Why should one more layer of review matter this much?

        1. Attend, grasshopper. First, no matter how great the merit of any case, the more bureaucrats look at it, the more likely it it will be unfairly torpedoed. For too many bureaucrats, risk is the favorite hate and “no” is the favorite word regardless of the merits. I suspect you understand this.

          Second, a secret categorization of “sensitive” applications, the definition of which is not in the law or any agency rule, by its nature violates the Equal Protection clause. A nameless person applies a concealed standard to decide my application sails through with only one review but yours is to be stopped cold with serial reviews not based on the law but on a cloaked subjective decision the standards for which are never explained and apparently not subject to appeal.

          We could go to points three, four, and five, but this is it for now.

        2. Read my post of what I went through. The categorization means from my experience that you aren’t going to get it allowed because a new rejection will just appear no matter the merit of it.

          It is like a committee puts it in a category of no way can this be allowed and then an endless stream of rejections come your way. And, also, you don’t deal with the people that have decided to reject the application, so you aren’t even sure what their reasons are.

          The examiner turns into this person that is just a front for rejecting it. You have no chance and waste $10’s of thousands of dollars of your client’s money. I think the application that I worked on for this I am sure the client had spent over $50K in prosecution.

          And again the examiner thought it was unfair too. He even told me he thought the rejections were unfair, but that he had to do it. Actually, now I remember a conversation with him where he said he had to reject it. And this was after he admitted that the pending rejection was no good. (Basically, do you get that what he said was yes this rejection is no good, but the committee is going to find another one and another one and we will delay this until we are both dead.)

          1. > The categorization means from my experience that you aren’t going to get it allowed because a new rejection will just appear no matter the merit of it.

            I get that, and I agree that this is deplorable handling of patent applications. (And, yes, when I read your comments above, they certainly seemed familiar.)

            It seems clear that there are more than a handful of examiners playing this game with more than a handful of applications. Presumably, they can’t all be driven to such mishandling by the SAWS program. Some of the examiners I’ve encountered in these situations seem to enjoy playing this game of keepaway – like the old Peanuts sketch with Charlie Brown, Lucy, and the football.

            I really don’t know why the patent office allows this to occur. Not only is it unethical, it’s a gigantic waste of PTO resources. Cases with pendencies longer than, say, four years should pop up on the tech center director’s radar as requiring higher-level review, reassignment to a different examiner, etc.

            1. David,

              Now you are the one assuming that such a “popup” would be beneficial…

              Don’t you think that – as exemplified with SAWS – that such “lifer” middle ranks are part of the problem?

              The problem is endemic throughout the ranks of the patent office. Such is what happens in the shadows. Such is exactly what the intent of the APA was meant to dispel.

              Look at the comments on this thread. It is easy to see those comments that carry an “examiner-attitude” that seek to pooh-pooh anything even remotely “wrong” with the shenagins coming into the light. All of this screams for more – not less – disinfectant for Star Chamber tactics. What else is going on? What are those “many other” internal programs? Why all the secrecy?

            2. I will also remind you that it took a public statement by Kappos that “quality does not equal Reject” to turn the tide on the Reject-Reject-Reject era (a factual period of time that certain regular posters still attempt to portray as having never happened).

              That was the Top Guy needing to make a public statement so that the force of a new belief system could be instilled into a lethargic (and evidently shadowy driven) administrative agency.

              Patent reform has been focusing on the wrong areas.

            3. Others are going to be quick to blame the examiners for these lame rejections. However, they were only doing what they were told to do. I hope their labor union has the guts to stand up for them.

    3. RH – the APA exists to prevent the extra-legal review (and as others have noted, actions that go beyond mere supervision).

      Can you say arbitrary?
      Even capricious?

    4. “Of course examination is done on the record – but then examination is an official statement of what is or is not patentable.”

      I’ll quibble that “examination” entails more than the “official statement” (i.e. the action taken) and that “examination” is not itself “done on” the record (though it is based on the record before it).

  21. Thanks, Dennis for being on this.

    There is more hoo-ha going on in the PTO than any of us can imagine. Anyone know anything about the Director’s slush fund, or the examiner training fund that corporations can “donate” to? Can’t imagine why IBM would want to be sending donations to the PTO. . . My FOIA asking for related documents produced a response that was so redacted and piece-meal it was unreadable.

    This line in Dennis’ post brought back not-so-fond memories of Dudas:

    “Those applications are then tiered and then before allowance must be approved by either a technology center director or upper PTO management.”

    No examiner wants his/her work picked over by PTO management. The main problem w/ Dudas was the “quality assurance” program where approved applications got an automatic enhanced review by SPE’s. And so examiners naturally stopped allowing to avoid getting any black marks, and the BPAI’s backlog exploded.

    Enhanced examination of both allowances and rejections would be a good thing, but if it’s just allowances, applicant’s are going to get skarooed.

  22. This raises two questions:

    1) What are the outward manifestations of the SAWS program? What’s the difference between a case that the examiner + SPE won’t allow because of SAWS, and a case that the examiner + SPE won’t allow because they just don’t want to?

    2) Frankly, what difference does it make? Do the applicant’s options change in any way?

    I’ve had a few dozen cases where we can’t get to an allowance, even though a minimally plausible grounds for rejection can’t be articulated. For example:

    * I’ve had a case where an entire set of 20 claims was rejected based on a single sentence of a single reference, reading almost verbatim: “Computers are known to store and process data.” Full stop.

    * I’ve had a case that has faced about ten different rejections, based on six completely different references. None of the references has even come close to the subject matter of the claims – some of them didn’t even qualify as prior art, as they were published years after the filing date. Yet, after every reference is undeniably distinguished, the examiner still won’t allow it – I just get bad rejection, after bad rejection, after bad rejection.

    * I’ve had a few cases where the examiner *and SPE* didn’t even pretend to care about the invention. The interview went like this: “You’re claiming some kind of variation of a database processing engine. Here’s a 50-page reference teaching a generic database engine… we’re sure it’s kind of the same thing to whatever you’re claiming. We’ll just cite randomly to paragraphs throughout the reference. What’s that? Be more specific? Nah, we don’t want to.”

    I don’t know whether these non-rejectable-yet-non-allowable cases are caught in the SAWS trap, or simply are stuck with a bad examiner. And I guess I don’t really care which is the case – unless I actually have different options in each situation.

    1. I’ve had a case where an entire set of 20 claims was rejected based on a single sentence of a single reference, reading almost verbatim: “Computers are known to store and process data.” Full stop.

      It’s difficult to share in your outrage without seeing the claims and the rejection. Did you appeal the rejections in any of these cases?

      1. I’m not actually arguing about the specific details of these cases, because they don’t matter. My questions are: When any of these types of situations arises – even just hypothetically – how can anyone outside of the process determine that SAWS is the cause; and how would that determination change any significant aspect of prosecution?

        1. Think the end if the Dudas regime and the end of the “just say no” Reject-Reject-Reject era.

          That was a pretty significant change, n’cest-ce pas?

      2. In re: David Stein January 19, 2015 at 12:23 pm.

        Could you share the patent application numbers so that we could look at the office actions in PAIR?

  23. A major problem with the program of course is that none of the heightened reviews are made of-record. Thus, neither the applicants nor the public are told which applications are up for review or whether the review is following any semblance of legal process.

    A problem with making it public which applications are in the SAWS program is the practical effect it would have on the presumption of validity. Patents that are allowed after having gone through a SAWS examination (assuming there are any) will appear to juries much more “valid” as compared to non-SAWS applications, while non-SAWS patents will appear to juries as more suspect, either because the PTO has already decided the application was not all that important, or because the application just got a run-of-the-mill examination, and not the special SAWS examination that would have made it really clear the invention was patentable.

    1. That “problem” must be balanced against the due process rights of the patent applicant. The statutes and regs say nothing about “embarrassing” as a basis for rejection. If you are rejected because a patent is embarrassing, you can appeal the rejection. But if the real rejection is not of record, how can appeal.

    2. That “problem” could also be addressed by not letting the jury see that information. If, as you suggest, that information is more prejudicial than probative, a judge should exclude it, on request of either party.

      1. DanH – I agree. There are already enough problems with how the presumption is treated in jury trials that the judge ought to keep this information out. But still this may be a reason the PTO doesn’t want to disclose what particular applications are subject to SAWS.

    3. So, if a known SAWS patent (e.g. Rolf) is challenged on IPR, and if even one dependent claim is struck down, what would that say about the quality argument? Now, that would be embarrassing.

      1. Jack,

        It is an embarrassment no matter how you look at it.

        If it is a good program, why the secrecy?

        If it is a bad program (and needs the secrecy to remain in place), well…

  24. “of special interest” reads to me as a red flag that there could be a fifth amendment due process issue in play here…..secrecy without either rigid/blind neutral policy or a national security interest is not compatible with democratic governance….

  25. My position is that the USPTO is right to allocate more time and energy on applications whose claims are clearly very broad in a way that would significantly alter the marketplace.

    So…all software patents?

    Clearly the office doesn’t want much said about the subject so I won’t, other than to say that I have never gotten nor flagged a SAWS case, nor do I know of anyone who was hired about my time who has, which leads me to believe a very small number of examiners deal with them. I suppose I can’t say whether it’s a big deal in terms of depth (i.e. once flagged what changes for the examiner) but it’s not a big deal in terms of breadth, which is consistent with what the office says.

    1. RG: which leads me to believe a very small number of examiners deal with them.

      OK, whatta’ got — you and a few of your friends. N = 1 + 12? How many examiners are there? 4000?

      Are you inadvertently implying that you are statistically challenged?

      1. haha n=13? That’s more than that in just my art unit. Try n=50 for a start, then factor in cross-AU meetings, the fact that since we know what the requirements are that the n=50 number would not expect the same hit ratio as a random sampling, and that information like this would be interesting enough to probably reach outside your first hop (so consider some friends-of-friends going on)

        There’s closer to 9000 examiners. I still didn’t make my statement just to make it.

  26. This stuff happens all the time. For instance, Rule 131 affidavits are reviewed by a group internal to the PTO. This group approves or does not approve the affidavit, but you can’t talk to them directly. You have to go through the Examiner. The groups that pulled cases from issuing after Alice came out were the same way (though now at least you get to respond to the Examiner). There are “quality control” boards to which the Examiner has to pass the claims before issuing a Notice of Allowance. The Examiner knows the result of these reviews, but there is nothing written down (other than what the Examiner might say).

    1. “There are “quality control” boards to which the Examiner has to pass the claims before issuing a Notice of Allowance.”

      This is completely false. The closest thing to this was called the quality control “second pair of eyes” program under Dudas, but it no longer exists. The program started after some bad press about certain patents that issued under Dudas that made the Washington Post and embarrassed Dudas. Under that program a high percentage of allowances were randomly chosen for second guessing. However, today instead the quality control people randomly review a small percentage of offices actions prior to mailing. There is currently no emphasis on allowances and it is completely random from the total number of non-finals, finals, and allowances.

    2. Nobody separately reviews Rule 131 affidavits. The only time that anyone other than the examiner (and their primary/SPE, if they don’t have signatory authority) reviews a 131 affidavit is (a) at the PTAB when you’ve appealed, and (b) when you file a petition to review an examiner’s finding that a 131 affidavit was improper or insufficient.

      1. Well, also if the case ends up being randomly pulled by OPQA for review. But the selection process for that is not based on whether there’s a 131 affidavit or not.

  27. “Trust us” as they violate the law (ALL examination processes to be conducted ONLY in writing) does not work.

      1. While 37 CFR 1.2 is not a law per se, there are indeed other statutes that apply to the arbitrary nature of such unwritten and unchecked “adventures.”

        1. I wouldn’t back off so easily, anon. The CFR is indeed “law.” It doesn’t have the force of statutory law, and can be trumped by case law, but it’s still law.

      2. btw, the danger of an executive agency acting in secret is also one of the fundamental pillars of the APA.

        For fun reading, try en.wikipedia.org/wiki/Administrative_Procedure_Act (especially the Basic purposes section)

        …and the rule requiring things to be in writing is binding on the agency as if it were law

    1. I assume, then, that you would advocate for getting rid of examiner interviews? Or at least you would champion having the interview recorded and placed on the record?

      1. Not necessary and likely problematic (especially for one side as noted herein).

        As to not necessary, as it is, the oral portions are already excluded from having an effect on prosecution (you might want to refresh your knowledge of the interview rules).

        As to likely problematic, I would have no personal issue with a verbatim transcription of all interviews added to the record (as I have indicated in past discussions on the matter). Others – especially including the Office itself – may not want such, as the utterances of examiners may prove embarrassing and any attorney worth their salt would be pre-prepared to only put on the record that which would help the client (and simply not pursue any “borderline” discussion.

        From the tone of your comment, I would presume that you think such recordings would disadvantage the applicant’s side, but I can assure you, the overwhelming disadvantage would be on the side of the Office.

        1. I find that it’s largely the attorneys who don’t want the details discussed during an interview on the record. Interview agendas frequently include a note that they don’t want the agenda made part of the record, particularly when proposed amendments are discussed. Attorneys also routinely ask me (or helpfully suggest) what the interview summary will say, even though they get their chance to summarize the interview in their next response.

          1. when i worked at the office i semi-regularly had attorneys provide arguments during interviews that lacked a basis in law and fact. some arguments were so blatantly based on bad law that if it were a matter of record (read: more evidence than she/he said, she/he said) OED would need to get involved. of course, back then (right now?) reporting representatives to OED was severely frowned upon, regardless of behavior.

            not recording interviews is one of the “niceties” the captured pto provides its card carrying members. we should enjoy it while it lasts.

      2. The Examiner interview
        1. involves the applicant, and so there is no secret decision making
        2. goes on the record, and is he meaningful aspects are supposed to be memorialized
        3. whatever is not written down cannot be a basis for later review or claim construction by a court.

      3. OK, so the PTO’s posting makes the existence of SAWS no longer secret. It reveals that SAWS applies only to a few applications. But what else?

        For example, how can we verify that “an application flagged for such a quality assurance check undergoes the same types of examination procedures as any other patent application, and is held to the same substantive patentability standards”? Would the Courts agree?

        If the program is so benign and useful, why the secrecy? Please, PTO, its just bad PR!

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