Getting SAWS Data from the USPTO

DoubleSecretProbationThe 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.

About Dennis Crouch

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

126 thoughts on “Getting SAWS Data from the USPTO

  1. 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.

  2. 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?

    1. 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.

  3. 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.

      1. 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.

  4. 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.)

    1. 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.

      1. 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.

      2. “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?

        1. 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.

          1. 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.

            1. 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.

  5. 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, . . .

  6. “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.”

    1. >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.”

    2. 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.

    3. 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.

  7. 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”.

    1. “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.

      1. 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.”

        1. 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….

    2. 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?

    3. 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?

  8. 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.

    1. 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”.

  9. 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.

    1. 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.

        1. 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.

          1. 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.

  10. 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?

    1. When you think SAWS, think IRS. There appears to be behind the scenes rigging of the system against certain kinds of applicants.

      1. 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.”

        1. 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).

        2. 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.

  11. :) 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.

    1. Random, what if someone from the White House called you and told you to deep six one of your applications. How would you react?

      1. 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.

        1. 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?

          1. 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.

            1. 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…

        2. 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)

            1. 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.

              1. 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?

                1. 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.)

                2. 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.

        3. “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.

  12. 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.

  13. 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.

    1. 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?

  14. 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?)

    1. 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.

    2. 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).

  15. 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.

  16. The Supreme Court has pointed out that patents are affected with the public interest, causing applicants to have a duty to disclose information to the PTO that the applicant may otherwise wish to keep secret. Does not that same public interest require divulgation of secret PTO ponderings?

    Note too that 37 C.F.R. 1.11 requires the files to be open to the public, subject to certain exceptions that the PTO is not citing in its FOIA denial.

    I should think that if I had a patent that had been given SAWS examination, I would want that to be known, since that would enhance the presumption of validity.

    1. Careful there SVG, as proponents of the SAWS program repeatedly stress that the exact same actual examination takes place, and thus, there can be NO enhanced presumption of validity.

        1. The mere fact that another group of Examiners is examining these applications means that the examination is different from what’s occurring for applications not in the program.

          1. The mere fact that another group of Examiners is examining these applications means that the examination is different from what’s occurring for applications not in the program.

            Do you not think that every application is subject to exactly the number of eyes the original examiner wanted it to be subject to?

            1. No, I don’t believe that. Because the examiner told us that he was not aware of SAWS until our application was flagged. In other words, the examiner did not flag it – someone else did.

              1. No, I don’t believe that. Because the examiner told us that he was not aware of SAWS until our application was flagged. In other words, the examiner did not flag it – someone else did.

                Sounds like there’s no issue if the person doing the examining isn’t aware of SAWS.

                1. Well, it was an issue for the examiner – he was let go. So, if the examiners do not flag for SAWS, who does? It was not the primary. It was not the SPE.

        2. SVG,

          It is telling, is it not that even as the Office continues to hide things, you have mouthpieces making light of this hiding, and saying – in effect – pay no attention to the man behind the curtain.

          So Oz-like…

          1. the Office continues to hide things

            Most of what’s being hidden is being hidden by request of the applicants.

            Try to remember that.

            I know it’s hard for you, Captain America.

            1. You again seek to confuse and conflate two very very different things Malcolm.

              Pay attention please, I have already corrected you on this matter of basic Quid Pro Quo.

              1. You again seek to confuse

                Says the guy who spent years here kicking up dust and using hundreds of different sockpuppets trying to derail any discussion of subject matter eligiblity.

                Please tell us more about “the Gestapo” at the PTO, “anon.” Do they have a mailroom? LOL.

    2. Silicone, regarding your statement “affected with the public interest” angle, can you please cite the case? In the recent case of Teva discussing claim construction, the Supreme Court addressed the issue of whether a patent was a public right and decided that it was not because it affected not the whole public but only people who infringed the claims. Patents are not like statutes – imposing obligations on the entire public. The public has no general interest in invalidating a patent – only the people who infringe, the people who would like to use the invention of another without paying for the privilege of doing so.

      1. At your service:

        “A patent by its very nature is affected with a public interest.” Precision Instrument Mfg. Co. v. Automotive Maint. Mach. Co., 324 U.S. 806, 816 (1945). “The public, therefore, is a most material party to, and should be duly considered in, every application for a patent . . . .”

        Quoted again in BLONDER-TONGUE LABORATORIES, INC., v. UNIVERSITY OF ILLINOIS FOUNDATION 402 U.S. 313 (91 S.Ct. 1434, 28 L.Ed.2d 788)

        1. Ms. Silicone (obviously from Southern California) Valley Girl, is an invention by its very nature affected with the public interest?

          1. Ned, Scotus says patents are affected by the public interest, if that answers your question.

            I notice that you ask about inventions, not patents. I suppose that the difference, if one wants to note a difference, is that the patent is the legal right to exclude. An invention does not provide its owner with that right — a patent does. The activities of the PTO in endowing that right, therefore, must also be affected by the public interest.

            The whole duty of disclosure came about because before 1995, applications were kept secret until issuance, so extra candor by applicants is needed. Query whether the same logic behind the early “fraud on the patent office”/inequitable conduct/duty of disclosure line of case applies in the days of published applications that the public can interfere with, just about at will.

            1. SVG,

              Be aware that no matter what SCOTUS says about “affect,” patents have the attributes of personal property – by law (the direct words of Congress for which the Court CANNOT over write).

              I hope that answers your questions.

      2. Patents are not like statutes

        Yes, they are.

        The public has no general interest in invalidating a patent

        Sure they do, if the patent should never have granted in the first place.

        only the people who infringe [have an interest in invalidating a patent]

        That’s like saying “only the people who ‘have an interest’ in breaking a law have an interest in seeing the law taken off the books.” And that’s plainly ridiculous.

        1. …and Malcolm can set those “personal statutes” aside at the mere “review” if he is his “usual” “reasonableness”

          Um yeah right.

          Another whiff of Malcolm self FAIL – the rules just don’t apply to him because he can decide.

          So very Red Queen.

  17. If you or anyone else files a civil action of some kind to require public disclosure of applications supposedly under this special secret PTO scrutiny, there are important public reasons that should clearly and immediately require identification of subject applications once they are published. At that point secrecy reasons no longer apply, and 37 CFR §1.290 third party pre-issuance submissions of prior art in patent applications of others, implementing 35 U.S.C. §122(e) from Section 8 of the AIA, is then applicable, and is badly needed. That is, with roughly half a million total published applications, publicly identifying, among those half million, those few published applications already flagged by the PTO as being of the highest public interest or concern, so as to encourage submissions of better prior art in those applications, is clearly of high public interest.
    Few really important applications will not have foreign filed equivalents and thus required U.S. application publications. Nor can there be any dispute from present data that only a very small percentage of applications will ever have any third party prior art citations unless somehow publicly “flagged” as needing public attention.

    1. BTW, since one highly likely SAWS party in interest, judging by his Nevada D.C. lawsuit against the PTO, is Mr. Gilbert Hyatt. So, is that suit over with? Has anything more been learned from it? [His pending applications are presumably pending so long that they will never need to be published.]
      Do we even know if the PTO has ever even tried to use “prosecution laches” rejections [which the Fed. Cir. majority finally blessed in two Lemelson decisions] in any of these Hyatt applications, rather than just refusing to prosecute some of them until this suit?

  18. Dennis –

    Is there a privacy issue here? If your application were flagged for extra scrutiny, would you want that made public? Maybe, if you are outraged by it…. maybe not if you feel it would give later infringers a additional argument to raise the cost of litigation…

    1. I don’t think there is a privacy concern here because of the rule that examination must be written and of record. However, anyone with a particular privacy concern should intervene in any eventual lawsuit.

      1. Sure, but I’m not sure that it is appropriate to subject an application to “extra or special scrutiny” in the first place. Making it public would seem to add insult to injury.

        Once the mechanism is instituted, whats to stop a political contribution (or worse) from the Brand I Corporation from influencing the Office to subject applications from Brand A Corporation to “special scrutiny”?

        1. Once the mechanism is instituted, whats to stop a political contribution (or worse) from the Brand I Corporation from influencing the Office to subject applications from Brand A Corporation to “special scrutiny”?

          That’s precisely why the process needs to be made public, Les.

        2. Sure, but I’m not sure that it is appropriate to subject an application to “extra or special scrutiny” in the first place.

          So everyone is a primary examiner? Yay!

          1. 1. Judging from the incoherence of some of the Office Actions they sign, it does not appear to me that primary examiners scrutinize anything.

            2. Even if SPEs do scrutinize the work of their secondaries, I think that would be characterized as routine scrutiny, not Special scrutiny…

        1. Same comment as to SVG at 7.1, Les.

          According to the Office, there is NO untoward special treatment for which any “privacy” concern can attach.

          Also, let’s not forget the APA and the fact that the Office itself is bound by its own rule at 37 CFR 1.2 – in other words, the Offce is bound NOT to have ANY matters of privacy in applications that have been published.

          (And yes, I harp on this dichotomy less so for your issue directly, but more so for those who want to cry “no foul”)

  19. I’d guess that applications with three consecutive NFOAs are probably on the list.

    I think this is pretty important to get the list. As I have said I am pretty sure I worked on one application on the list. Others have said there are ways to get it allowed even if it is on the list, but I am not certain they had applications on the list. I’d be very interested to know if the application I was working on was on the list. It would explain a lot.

    1. My guess, by the way, is that there are some nasty secrets that are being kept. It is probably like all agencies in that if they can keep something secret there always seems to be some bad actor in the agency that will take advantage.

    2. Although there are some examiners that seem to regularly get away with issuing more that three office actions in the same application [probably to try to avoid appeals] that does not mean the application is under SAWS, and twice-rejected [identical] claims can be appealed anyway.

      1. I agree Paul that they may not be on the list. That is why I said “probably.”

        Also, your appealed argument begs the question of what happens to the SAWS applications on appeal.

        The real reason to get this out in the open is to find out just how the PTO is treating the applications so we know and can best represent our clients.

        Are there secret procedures that we don’t know about? When I call a SPE does he/she look up the status of the application and have different discussions with me depending on the whether it is a SAWS application? Etc.

        The best reason to make this an open process is to be fair to applicants.

        1. Let’s also keep in mind that the Office let slip with its miniscule admission on SAWS that SAWS is but one of many internal secret programs.

          What else is there that we don’t know that we don’t know…?

            1. My lower case amorphous friend, I had to look up that reference.

              If you are comfortable with that reference, go for it.

              However, the context is just not the same as the context intended.

              The better context would be the following quote from Rumsfeld (circa 2002):

              As we know, there are known knowns; there are things we know we know. We also know there are known unknowns; that is to say we know there are some things we do not know. But there are also unknown unknowns — the ones we don’t know we don’t know.

              (Later he added: “There’s another way to phrase that and that is that the absence of evidence is not evidence of absence.“)

      2. Do the claims have to be identical?

        41.31(a)(1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board…

        I always interpreted this as not requiring the identical claim being rejected twice, just that the “claims” were rejected twice. Thus, if your claims are rejected, you amend them and the claims are rejected again, you can appeal.

  20. Dennis, if you haven’t had a chance, you might want to take a quick read of that memorandum and order by the judge who blocked the O-man’s new regulations regarding immigration. In a nutshell, the Obama ministration defended the new regulations declining to enforce the immigration laws as nonreviewable prosecutorial discretion. The judge found the new rules were far beyond simply not enforcing immigration laws, but providing positive benefits and services to illegal aliens. This the judge ruled was not discretion, but lawmaking.

    The case most central to the argument is Heckler v. Cheney, which essentially held that decision is not to prosecute or not to enforce are not reviewable, but decisions to assert jurisdiction were reviewable under the Administrative Procedures Act. Of course, a person complaining under the Administrative Procedures Act must have standing to complain, which means they must have suffered injury, etc.

    Essentially, people who have been victims of the special procedures may have standing to complain. But they never know about it…

    Regardless, the holding in the litigation about the enforcement of immigration laws was that the rules were substantive, and for that reason, were subject to conventional rulemaking procedures, i.e., publication in the Federal Register for comment, where source of the legal authority for issuing the rules was cited. In the case of immigration rules, this might be hard for the administration since the judge already ruled that the Obama ministration has no legal authority to do what it did. I think something similar is going on here with the SAWS program.

    1. Have there been crowd funded lawsuits? I’d have to think about the ethics of that a bit before committing to giving money.

      1. What would be unethical? Even if you’re handling one of the cases that have been selected for this special scrutiny, how would that be unethical? (And I’m just asking, as I cannot figure out how this would be unethical.)

        Personally, I’d love to be able to crowd-fund some litigation. For instance, I think the Gov’t should be sued for providing eating guidelines not based on solid scientific evidence. At my kids’ school, they cannot have full-fat milk, but can have non-fat, sugar-filled chocolate milk. That’s simply wrong and not supported by any randomized controlled trials.

        1. Would it be unethical for examiners to contribute? I wouldn’t be gainsaying any official policies or anything – I just like a good fireworks show.

Comments are closed.