The USPTO operates a Sensitive Application Warning System (SAWS) that internally flags pending applications that include “highly controversial” claims or that might create “unwanted media coverage” for the USPTO or the Administration. Those flagged applications are apparently tiered and then, before allowance, must be approved by either a technology center director or upper PTO management.
In general, I agree with the USPTO’s policy of attempting to apply more examination firepower in areas where it is needed, either because of the difficulty of examination or a likelihood that issued patents will be highly disruptive to settled expectations. However, I have concerns as to how the policy is being carried-out here, in the SAWS program. And, because the USPTO is ordinarily very forthcoming with its examination process and results, its attempts to hide its actions here tend to suggest that it has reasons to hide.
In January 2015, the USPTO denied my request for a list of all published patent applications that had been flagged for the SAWS program (as well as reasons for the flag), and whether USPTO political-appointees were reviewing particular applications. I then appealed that decision internally to the USPTO general counsel’s office and that appeal has now been denied. [FOIA Appeal Denial A-15-00008].
The Freedom of Information Act requires Federal Agencies to, “upon any request for records … shall make the records promptly available to any person.” 5 U.S.C. 552(a)(3). However, the law also includes a set of exceptions. Notably, the statute indicates that the agency is not required to disclose “(5) intra-agency memorandums or letters which would not be available by law to a party other than an agency in litigation with the agency.” 5 U.S.C. 552(b)(5). The statutory exception is a bit oblique, but has been interpreted as a sort of privilege for executive agencies.
Citing Exception 5, the USPTO has rejected my appeal – arguing that the requested list of applications is protected by both “quasi-judicial privilege” and “deliberative process privilege.” [FOIA Appeal Denial A-15-00008]. In general, I do not believe that the USPTO’s list of SAWS applications fits into these definitions of privilege as defined by the case law.
The next step is to file a civil action, although I have not yet decided upon that course.
USPTO’s classification contractor is required to identify “offensive material”. It’s most recent RFI reinforced the requirement that the contractor identify this material stating:
E. Offensive Material Review
The Contractor shall review each application for offensive material that may affect an application’s publication. Applications that may contain subject matter considered to be offensive will be classified then referred to the Government for review. The Deputy Commissioner for Patent Examination Policy has issued the following guidance on reviewing applications for offensive material.
Offensive material is defined in the dictionary as unpleasant, disgusting,
revolting, repugnant, causing resentment or anger or insulting.
Examples of potentially offensive disclosures in an application are:
Material suggestive of terrorist activity (e.g., a figure of a plane colliding with a building or methods of delivery of toxins to the Government or general public);
Graphic sexual illustrations or descriptions;
Applications obviously devoid of statutory subject matter (e.g., unibomber’s manifesto); or
Applications including derogatory comments concerning the Government.
Looks to me like SAWS is alive and well.
Instead of going after the applications, how about going after the memorandums, rules and other documentation related to the SAWS program, rather than the application numbers of those pending cases that fell into the SAWS program. Did not have time to see if others said this before me, so if I am repeating some else’s tread, my apologies. Civil action is a waste of time. How about an appeal of the decision, or is that not permitted?
Great point. I have never heard of a quality program that was not thoroughly codified and subject to configuration control. In other words, there must be a SAWS manual which would include revision history, and appropriate level of oversight to approve changes. Is there a chance an informal system could survive all these years? That said, in the real world of innovation and product development, I can’t recall ever seeing a secretive quality assurance program.
Here’s one: Dilbert.com/strip/1999-01-31
Am here is some historical perspective:
link to en.wikipedia.org
Dennis,
The decision to classify something in SAWS is “embarrasing”, which is ultra vires to the PTO statutory mandate, and outside any rule making. SAWS applications have much lower allowance rates, much longer pendency, and incur greater costs than comparative cases in the same technology group. i.e, there is evidence of harm, resulting from acts outside the remit of the agency.
Therefore the right of the agency to avoid embarrassment and keep internal deliberations confidential must be balanced against allegations of systematic bias. Think IRS scandal, or any administrative decision where there is an allegation of systematic bias. The only way to determine if there is such bias is to allow analysis of the data. This can be done in closed court, if needed.
It is also a red flag that the PTO classifies as SAWS anything that might read on the PTO’s own technology: the PTO could be denying a patent on something solely as a basis to avoid paying license fees, which is a clear conflict of interest.
If the PTO does not open up about this, it is only a matter of time before Congress gets interested. They are likely to be far more hostile.
The only things that should be confidential at the USPTO are the unpublished applications (and their file histories) and personnel files. Nothing else.
I loved the patent system and the practice of patent law because it was supposed to be the level playing field on which the big and small could fairly compete, at least in the obtaining and enforcement of the granted rights. Today? Meh, it is a rigged game. As in climate change, money talks and science walks.
Lots of attempts to hijack this thread, but the reason this SAWS program needs to see the light of day is so that applicants are treated fairly. Applicants have the right to know what procedures are being used to evaluate their application.
(We can count on MM blasting us with more of his judicial activist propaganda.)
Night Writer,
The issue is bigger than that.
Let’s say for argument’s sake that the actual examination is the same.
The Office is still violating the APA (arbitrary actions) and its own rules (37 CFR 1.2).
The very reason why administrative agencies are so constrained are quite evident here – even if (or especially because) the administrative agency is seeking to cloak its actions.
For all if those seeking to downplay the Office tactics, the simple question remains: why be secret?
If a quality program “works,” should not that success – and the factors for the success – be broadcast loudly?
There simply is NO viable rationale for secrecy in this regards.
None.
Leastwise, one that can be, or has been, reasonably defended in the blog comments. If the Office wants a “notification” program, such just does not require secrecy.
Yes. Yes, anon. All of that is true too. But let’s be practical about this. The PTO shouldn’t be playing games with our client’s time and money.
“anon” For all if those seeking to downplay the Office tactics, the simple question remains: why be secret?
Yes, why are telephone Interviews between applicants and Examiners not being recorded and made available to the public? The results of those Interviews affect far, far, far more applicants and more members of the public than these silly “SAWS” applications.
If we’re going to start opening up the PTO, let’s start where it actually makes a real difference that benefits the public instead of the other way around.
Outside of the context of extremely important negotiations between the public and the governement (like Examiner/applicant interviews), everybody understands that there are tons of things happening every day at the PTO and elsewhere in government that are “secret.” Do you want to install a mini camera and microphone on every government worker’s forehead?
The public is also the people that submit patent applications.
And yet again another obfuscation by Malcolm on a topic already addressed and the differences noted.
The results of the interview – per the directive that the Officr is held to (37 CFR 1.2) – are already captured and made of record.
I know that you are conflating a different thing – the ad hoc contemporaneous discussions and that you want those too to be literally preserved and made of record.
As I told you previously, I have no problem with that per se. The problem as I explained to you is that such ver batim tactics are known to lessen (and some may claim eliminate) any good that the interview process brings. Your “real difference” is a negative thing – that is, your desire is not only ineffectual, it is counter-productive and it is simply not on point as to the result of interviews being on the record and only that which is on the record as already affecting the application process.
Your “everybody understands” line is pure B$ and has nothing to do with the topic at hand, the administrative agency function (and related APA restrictions) and the immediate issue of a government wishing to hide something. Stop kicking up dust.
It is just ridiculous to be equating interviews with secret procedures at the PTO. But, the policy sheets says it is so, therefore it will be typed in by MM.
What is truly ridiculous Night Writer – of which I know that you know already – is that this mindless yet purposeful obfuscation is allowed to run rampant – nine years now and running.
Malcolm’s attempt at derailing the focus on this issue was suitably addressed previously. And yet, instead of actually addressing this properly and forthrightfully, we are all exposed (yet again) to the drive-by internet style shoutdown of non-dialogue obfuscation.
Not a single one of Malcolm’s 17 posts here even remotely serve to advance the dialogue in a meaningful manner.
Not one.
Nine years and running of something other than America’s leading patent law source.
P.S. A lawsuit may not even be essential to see more about SAWS, once Rep. Darrell Issa gets wind of this juicy topic for another potential government-scandal-asserting-investigation, with the PTO now under his House Committee jurisdiction and subpoena power, . . .
“In general, I agree with the USPTO’s policy of attempting to apply more examination firepower in areas where it is needed, either because of the difficulty of examination or a likelihood that issued patents will be highly disruptive to settled expectations.”
In general, I very much don’t agree with the last phrase. Who defines “settled expectations”? Who decides if something will be “highly disruptive”? These are not academic questions – you have a guest post a few clicks down predicting a monopoly on the Internet arising from an application that is currently pending, a rather overwrought contention that the comments it has spawned show is not universally accepted.
Your comment may sound reasonable to an academic, but try to put yourself in the position of a practitioner attempting to counsel a client. “Your invention appears to satisfy the legal requirements for allowance, but I have no idea if it is in an area that a bureaucrat may think is “sensitive”; I have no idea if the bureaucrat will or will not think it might upend “settled expectations” or even what those might be; and I have no idea if that bureaucrat will think your claims are “highly disruptive”. I do not even know what standards are being applied by the bureaucrat in making these determinations, as there is nothing in the statute or case law about them.”
>Who defines “settled expectations”? Who decides if something will be “highly disruptive”?
I agree. This is not applying the law. This is ’cause law like Alice. This is the law where hindsight is not recognized, ignorance of science doesn’t matter, ignorance of patent law doesn’t matter, all that matters is some person in power looking at something and saying, “No. You don’t get that ’cause.”
I have no idea if it is in an area that a bureaucrat may think is “sensitive”; I have no idea if the bureaucrat will or will not think it might upend “settled expectations” or even what those might be; and I have no idea if that bureaucrat will think your claims are “highly disruptive”. I do not even know what standards are being applied by the bureaucrat in making these determinations, as there is nothing in the statute or case law about them.”
“I have no idea if your claim is abstract. I have no idea if your claim is obvious. I was born yesterday. Your world frightens and confuses me.”
Meet the Unfrozen Cavemen Patent Attorney.
Meet the voice of Google.
Having been a registered patent attorney for 45 years (caveman qualification), having been through the “fraud squad” years, and having never accepted a “business method” applicant, I can say I have never felt that the patent system was as politically influenced as it is today. Who wants to be a patent prosecutor today?
This is a thread that should avoid petty bickering between MM and anon and really examine what is going on behind the screen. There is a serious disconnect between examiners who force an appeal on amended claims after citing a newly found reference and making the OA final using the usual excuse that it was the applicant that caused the new search by amending a claim.
Today, there is no repport between an examiner and an applicant’s attorney. It is a game that the “inventor” can no longer afford to play. Jump through the hoops, get a patent and go to never ending hell.
Here is a question: who is keeping the PTO from educating applicants about subject matter eligibility?
For example, why isn’t the PTO telling people plainly that a claim that protects any kind of information — regardless of any field limitations — is ineligible for patenting because information is quintessentially abstract?
Exacty what keeps the PTO from making elementary fundamental statements like this? There’s three answers: ignorance or dishonesty or both.
Let’s open up the hood and see where the problem is and who’s “rigging” the system and encouraging applicants to keep filing junk claims (that the PTO is incapble of examining properly). Seems like there’s far more people actually adversely affected by this problem than the microscopic number allegedly affected by “SAWS”.
“Exacty what keeps the PTO from making elementary fundamental statements like this? ”
I think they more or less did state that. Though the people in the legal room seem confuzzled about what “preempt” means half the time, but then bizarrely the other half of the time they seem to get it. It’s a really odd situation and some people in the office think we’ll keep on getting guidance that keeps “changing” from the supremes when in fact the law hasn’t changed in over fifty years. It’s super weird to hear this stuff.
I think they more or less did state that.
“More or less” is exactly the problem.
There shouldn’t be any question about it. The reason people question the basics is because the basics get swept under the rug. They get swept under the rug because the agency is compromised and failing miserably at the task of educating its wannabe “stakeholders.”
Basics like supposedly how an ‘old box’ can “magically” have new capabilities that were somehow “inherently already in there (wink wink)” ….?
Why do you always run away from the basics, Malcolm? Basics like software is defined to be a machine component and manufacture in its own right; that software is equivalent (and yes, let’s not move the goalposts to “exactly the same as” which has no place in patent law discussions) equivalent to hardware and equivalent to firmware.
You know Malcolm, the basics well understood by PHOSITA….
The article is about SAWS, not patent eligibility. But you aren’t the only cranky old man with a burr under his saddle, muttering the same complaint all day as he wanders from bus stop to bus stop.
Why don’t you take up checkers over at the park?
Oh boy, we are going to pretend again that Prometheus was about “information” and not a natural law. Is that on the judicial activist action plan?
are going to pretend again that Prometheus was about “information” and not a natural law.
Exhibit A.
I admit that there is a possible positive outcome over pulling at this thread, Dennis.
There is plainly agency capture and some serious rot lurking within the USPTO and that’s been well-known for years. I’m talking about pig-ignorance of the type that we see here on a regular basis. You know, the guys who keep on mumbling about “claim dissection”, “star chambers”, “rapers and killers”, “separation of powders” and “boxes of electrons” because coming up with a coherent defense of th typical computer-implemented and information-protecting junk flowing out of the PTO is miles beyond their mental midgetry.
Those ignorami within the PTO have been working for years — and rather successfully until fairly recently — to keep the gravy train rolling for the lowest forms of innovators, that tiny class of entitled millionaires who never saw a grift they couldn’t embrace, especially if it involved manipulating the government at the expense of everyone else.
So keep pulling at the thread, Dennis. Shine a big bright light on the USPTO. You know as well as I do that more the public learns about our broken the system, the more reforms are coming its way. And those reforms aren’t going to make any of these SAWS-inspected applicants happy.
Was this an box of insults paid for by Google?
There is zero content to your post. Just lots of insults and lots of issue sheet point hitting.
I’m sorry that I am pedantic. The plural of ignoramus is ignoramuses.
I bring this point up because ignoramus is a legal term that I am always explaining to American lawyers.
It is a(n apparently obsolete) grand jury response to a prosecutors bill to indict when there is insufficient evidence. It means “We do not know”.
Dennis: ts attempts to hide its actions here tend to suggest that it has reasons to hide.
LOL.
Meanwhile, Dennis, let’s count the number of “expert” bozo law firm partners and other “experts” (e.g., some of the people who guest posted here) who, during the run-up to the utterly predictable 9-0 Prometheus v. Mayo decision and in its immediate wake, were somehow unable figure out (1) the facts in the case or (2) what the case was about, in spite of those facts and issues being shoved right under their noses in real time.
And then let’s talk about what the obvious failures of those people “suggests” about those people and their alleged “expertise.”
That was a real scandal but nobody cared to talk about it much. Let’s all pretend it never happened!
Likewise with the USPTO utterly failing to apply In re Grams and other eligiblity cases. What happened there? Hundreds of thousands of junk patents and reams of junk lawsuits later and nobody really cares to look under the hood to determine how that happened. Then suddenly someone hears about a spigot at the USPTO that isn’t turned up to 11 and all of a sudden we’ve got the flag wavers wetting themselves over some millionaire grifters allegedly not getting their fair share of due process.
What a joke.
Maybe you can get Howard Shipley to pen a better rant for you.
MM, you are right to complain that the PTO for a long time lead the charge in the wrong direction. Its prior junking of the business method exclusion that lead to State Street Bank. It dropped its appeal in Beauregard. And it did not seek cert. in Donaldson that reversed longstanding precedent against functional claiming.
I think that just about then, it began to listen to “stakeholders.”
Yeah, those guys.
Aiming at the wrong targets again Ned – these things you whine about are there curtesy of Congress and the 1952 Act.
Can you tell everyone again, “anon”, what you believe that Congress was trying to do with the 1952 patent act?
For example, do you believe that Congress wanted to make (1) new and useful mental processes and/or (2) manufactures embodying new and useful information eligible for patenting?
That’s a yes or no question. Answer the question and then provide your evidence. Ask David to hlelp you. He’s a smart guy. I’m sure he had this conversation with his bff Randy already and I’m sure it was really deep and thoughtful.
Notice how “anon” is incapable of answering a direct follow-up question to his horseshirt.
Keep up the great work, “anon.” I love watching you spin.
Do you think the USPTO is not forthcoming with information because of the subject matter of the applications, the internal processes that decide the sensitive cases, or both? And has any other request been fulfilled re: SAWS info?
When you think SAWS, think IRS. There appears to be behind the scenes rigging of the system against certain kinds of applicants.
Ned: There appears to be behind the scenes rigging of the system against certain kinds of applicants.
I’d love to see one scintilla of actual evidence to support this charge.
You know, like a single example of a patent claim that should plainly be granted but isn’t being granted because “rigging.”
“I’d love to see one scintilla of actual evidence to support this charge.”
So would everyone else
(that’s kind of the point about making a big to do about the secrecy thing, chump – but your notion that a light shining onto the star circle will show just who has “captured” the agency is down right hilarious).
MM, I cannot and no one can.
But the extreme reluctance of the Office to be transparent is raising concern for people who would otherwise not be so concerned.
Ned: people who would otherwise not be so concerned.
Riiiiiiiiight.
🙂 I just want everyone to know that while out for coffee today I asked one of my fellow Examiners what he thought about a claim on a case that was mine, not his. You may now commence your freakout.
and that is an advantage of not hoteling.
Random, what if someone from the White House called you and told you to deep six one of your applications. How would you react?
Random, what if someone from the White House called you and told you to deep six one of your applications. How would you react?
Well that depends on which fantasy character is playing the President. I mean if it’s Tony Stark, sure. Captain America? Probably not.
As I’ve said before, we don’t need a program and complicated bureaucratic machinery to reject something we don’t like. I do that for the American people for free (well, not free, cause I’m paid, but you know – for nothing extra). We’re not Bond villains – we don’t have to slowly lower a claim into a vat of unfed sharks, we pretty much just shoot it and go about our day.
Here’s how someone would clandestinely make sure, for an example, a patent like the one on the previous page never saw the light of day – Step 1: they would have a SPE assign the case to me. Step 2: never say anything. There would be no documentation. There would be no improper examination because I wouldn’t even know their desires. They would just assign the case to the person least likely to allow it and let that person do what he does. You have a conspiracy of MAYBE two people (and that’s assuming the SPE is in on it) neither of which is the actual person signing the document. What they wouldn’t do is create a named program, circulate office-wide memos and then engage the general counsel to defend it in the hopes that ten thousand people of rotating employment status can keep a secret.
It’s entirely possible that Google is pulling the strings, directing competing applications to me in an effort to see none of them get allowed. It’s not possible that SAWS is the vessel by which they do that.
Are you implying that you never allow anything? Or are you saying you would ensure cases like those on the previous page are not allowed?
My allowance rate is much lower than the average for my tech center. If I was the examiner on the application from the previous page it would not issue.
Did not know RandomGuy was working at the USPTO. Ah, that explains everything about the tone and substance of his replies. I’ll light a candle tonight for his “patent” soul so maybe some much needed light can shine upon his darkness…
“Captain America, probably not”
/face palm
Um, Random, you are aware that the meme you reference (Marvil Civil War), you have chosen the bad guy side of loss of freedom for “security,” right? Big Gov (along the lines of socialism) versus The American Ideal (the rugged American individual)…
A bit telling (a bit more than perhaps you realized)
A bit telling (a bit more than perhaps you realized)
Please tell us more about comic books, “anon.”
They seem very important to you.
Pay attention Malcolm – I was not the one to introduce the characters.
And it is – of course – the sense of Justice that prevails. Your ad hominem is horribly misplaced yet again.
I was not the one to introduce the characters.
Right. You were the one who took issue with the way that the characters were invoked and you dropped some innuendo about that being “more telling” than the original commenter realized.
Please tell everyone what you were talking about! It sounds like you are really onto something but many of us have not kept up with the awesome world of comic book hero scholarship. Don’t leave us in the dark! What is this “more telling” business you referred to?
I simply did not “take issue” with how the characters were “invoked” – I merely pointed out that the meme Random chose rather tells more about him than he might have wanted to tell.
(Random / you really going to pick a nit on spelling? On a blog? When you boff the selection of role models? LOL – if so, I’ve got a quote on that from none other than Prof. Crouch for you to ponder.)
All he’s talking about is a storyline where the mutants all get made by the government(s) to register themselves and their powers because they’re too dangerous. Some mutants/heros fight because they don’t want to, the captain stood with the gov. Tony may have been on the other side I don’t remember and haven’t even read the comics, just heard the storyline. It’s freedom vs. security in comic book form.
Though Random’s comment wasn’t “a bit telling” as he just picked a cool superhero he’d help out and a lame one he wouldn’t.
But I’ll say this, if the prezzy himself (or through his verified agent) tells me to “deep six” an application then I would simply drag out prosecution a bit and do massive searches until I found good art and narrowed the claims to the prezzy’s liking. I’d also get Michelle Lee involved since she technically has the statutory authority, especially if they were pressing for absurd rejections to be made rather than an allowance. At the end of the day tho, I’d say I’m still under the president’s command and so is Michelle, barring him wanting to do anything blatantly and absurdly illegal.
6,
That’s embarrassingly badly off.
Geesh – you call your self a geek?
Shh, I want to hear more of this “Marvil” universe.
“What they wouldn’t do is create a named program, circulate office-wide memos and then engage the general counsel to defend it in the hopes that ten thousand people of rotating employment status can keep a secret.”
But isn’t that what they did? If not with SAWS, with second pair of eyes. And I’m not saying they didn’t do that with SAWS. They’re certainly not tagging these “sensitive applications” with a “warning system” they’ve put in place to speed up the allowance of those applications.
Wow, that is freaky.
He moonlights at Starbucks?
And here I thought you guys were paid fairly well.
Patentghazi! Patentgate!
I encourage you to pursue this cause. Public scrutiny is necessary to prevent corruption and non-public interests from improperly influencing governmental action. Whether or not the SAWS program has been abused in the past, public access to information concerning its adoption and implementation is essential to ensure that the PTO’s actions are in the public interest.
I also encourage you to pursue mediation through OGIS and to enlist support from other parties, such as the AIPLA, and get media coverage before filing a civil action. This approach may narrow the issues (your FOIA request may be too broad in some respects, such as your request for “all applications” rather than “all published applications”), and may potentially lead to some acceptable resolutions. The views and information discussed by all parties in mediation might also lead to a more focused FOIA request, which should provide a stronger foundation for a civil action, if necessary.
Good luck.
My initial reaction is that SAWS applications need to come to the light. It does not seem right to be secretly subjected to some increased scrutiny without due process or at least without some control of randomly selected applications that are also subjected to such scrutiny.
However, from a self-preservation perspective, how would my law firm fare to discover a high percentage of SAWS applications? (Speaking hypothetically of course). How would my clients fare to find out that a higher than average amount of their applications are SAWS? What kind of embarrassment could attach to me and my clients considering the PTO is worried about embarrassment so that SAWS tag = embarrassment? What if my client engages multiple firms and my firm’s product is more often subjected to SAWS tagging?
Hmmm, maybe I don’t want to know.
Or maybe let me and my client know before publication so we can go away quietly.
Is not the appropriate reaction, to finding that a body of your work is being magically SAWed in half, to simply tell the client that the PTO has decided that your claims are of great public interest, and thus the client should authorize extra expenditures by your firm on their behalf to see that they get the broadest possible claim protection?
1) Is the SAWS program a continuation of the old “second pair of eyes” program?
2) Under whose regime was the SAWS program implemented (Doll, Kappos, Lee, Other?)
I was an examiner in the mid-90s and I believe they had the SAWS program back then, not that I had any of those cases.
1) SAWS wasn’t a continuation of the second pair of eyes, but it was similar.
2) It definitely existed during the Dudas years, but don’t remember exactly when it was implemented and under what Director (they come and go with the tides).
Having worked in a General Counsel’s office, I know that the type of FOIA response you received often follows a similar pattern: the General Counsel decides that something should not be disclosed, and then gives the matter to an Associate General Counsel to write a memo backing the GC’s position. In these situations, the law doesn’t matter, it’s the GC’s self-serving interpretation of the law that matters. To support such an interpretation, the FOIA exemptions might need to be perversely twisted into a sort of shell game to prevent the public from gaining rightful access to information. You might want to consider the denial of your request and appeal in that light.