Guest Post by Dr. Gaudry and Prof. Tu – Our Call to the PTO: Release SAWS Data

Guest Post by Dr. Kate Gaudry and Prof. Shine Tu.  Professor Tu is an Associate Professor of Law at the West Virginia College of Law.  Dr. Gaudry is a patent attorney with Kilpatrick Townsend.

The Sensitive Application Warning System, or SAWS, program is a secretive program operated by the U.S. Patent and Trademark Office that flags certain patent applications for a heightened level of scrutiny. In October 2014, the PTO responded to one of our requests for information about SAWS. This post discusses the data the PTO provided, highlights areas where it is incomplete, and explains our concerns about the information the PTO declined to provide.

The SAWS program operates like this: If an examiner determines that a criterion applied to an application being examined, he/she is to propose that the application be characterized as a SAWS applications. When an application is entered into the SAWS program, multiple other people (seemingly up to eight or more people) must review and approve examiner-proposed notices of allowances. This enhanced-scrutiny review can negatively impact the applicant. For example, it would likely result in a reduced probability that an application would be allowed, an increased number of office actions issued and an increased pendency. Further, it would appear to prevent the applicant from being able to talk to (via an interview) or even identify the decision-makers controlling an application’s fate. Despite these potential consequences, applicants are not informed when an application is entered into the SAWS program, and the PTO refused to respond to multiple of our requests to identify SAWS application numbers. The PTO instead has insisted that SAWS has a minimal impact on prosecution. (See http://www.corpcounsel.com/id=1202678064286/Secret-PTO-Program-Delays-Patent-Approvals.) This conclusion would be surprising given the structure of the program, and is contradicted by our preliminary data.

Sixty pages of memos indicated that there were approximately 100 SAWS-eligibility criteria. Some criteria seem reasonable: for example, “applications claiming inventions which would endanger individuals, the environment, the security of our nation, or public safety.” However, some criteria seem extremely broad, vague and/or frivolous, such as applications “dealing with inventions, which, if issued, would potentially generate unwanted media coverage;” “disclosing seemingly frivolous or silly subject matter;” “with claims of pioneering scope;” “claiming the prevention or curing of diseases which were previously considered impossible to prevent or cure, such as … Alzheimer’s disease, … [or] HIV infection;” and “[directed to] smartphones and other convergence-intensive devices.”) (A full summary of the released SAWS information and criteria can be found here: http://www.kilpatricktownsend.com/en/Knowledge_Center/Publications/Articles/2014/12/Secret_PTO_Program_Subjects_Apps_To_Heightened_Scrutiny.aspx). Given the breadth and vagueness of these categories, we are concerned that the SAWS program seems to be designed to allow the PTO to arbitrarily heighten the criteria of patentability for certain applications.

The PTO recently granted one or our requests to identify high-level statistics pertaining to the program. An initial report of some of these statistics can be found here [http://www.kilpatricktownsend.com/en/Knowledge_Center/Publications/Articles/2015/01/Secret_PatentExamination_Program_Rare_But_Consequential.aspx]. In sum, the PTO provided data regarding the total number of applications that were flagged for SAWS evaluation in fiscal years 2006, 2008, and 2010 having each of three statuses: patented, pending or abandoned. Additionally, the PTO provided information segmenting these applications based on technology center assignment and prosecution statistics for individual application sets (each set corresponding to a SAWS designation, filing year and current status).

In short, very few applications are evaluated under the SAWS program (approximately 1 in 2500). However, for those that are – contrary to the PTO’s contentions – the PTO’s own data shows that the SAWS program has a sizable impact on prosecution, both in increasing prosecution duration and reduction in allowance rates.

SAWS Impact

Reduced Allowance Rate

One impact is that SAWS applications appear to be less likely to issue as patents and more likely to be pending for extended durations. We had requested data identifying the status for published, utility SAWS applications filed in fiscal year 2006 and for published, utility applications filed in the same time period. As reported in the January 2015 Law360 article [http://www.kilpatricktownsend.com/~/media/Files/articles/2014/Secret%20Patent-Examination%20Program%20Rare%20But%20Consequential.ashx], far fewer SAWS applications had issued as compared to the greater application set (see Table 1), and many more were pending.

SAWS1FIG. 1 below breaks this result down by technology center. (“BM” is representative of the business-method art units in technology center 3600, which includes art units 3621-29, 3681-89 and 3691-96.) As shown, SAWS applications are generally substantially less likely than other applications to have issued as patents (FIG. 1A) and are substantially more likely to be pending (FIG. 1B).

Figure 1

Figure 1

It is impossible for us to evaluate the appropriateness of SAWS applications being less likely to be patented 9 years after filing than other applications because the PTO has not released the application numbers. Potentially, these SAWS applications include “silly” applications (however that is defined), or potentially these SAWS applications include a novel drug that will cure Alzheimer’s disease. But without the application numbers, we can only hypothesize about the contents of the SAWS-tracked applications.

Extended Prosecution of Patents

What we can, at least quantitatively, evaluate are those applications that the PTO eventually determined were worthy of a patent. As initially reported in the above-referenced Law360 article, the prosecutions of these patent-worthy applications were dramatically affected. In particular, it took substantially longer to receive notices of allowances. FIG. 2 is a new graph showing the time from application filing to patent issuance for SAWS patents and other patents filed in fiscal year 2006, separated by technology center.

SAWS3

Figure 2

Thus, years (on average, three years) are added to a patent’s pendency, and this delay will likely be even more substantial as the pending SAWS applications reach final disposition. Technology Center 1600 is one center where this delay is quite apparent. Given that Technology Center 1600 examines patent applications relating to (amongst other subjects) drug compounds and that SAWS applications are more common in Technology Center 1600 than many other technology centers, the delay may be of great societal concern, as it may affect investments devoted to the innovations and thus the accessibility of new treatments. Further, the number of SAWS applications in Technology Center 1600 has approximately doubled between filing year 2006 and 2010.

The prosecution delay could be, due to additional office actions issued against SAWS applications. For applications filed in fiscal year 2006 that have issued as patents, the average number of office actions issued per patent was 4.3 for SAWS patents and 2.3 for the corps-wide patent set. Another one of our upcoming articles on IPWatchDog shows the discrepancy in office-action counts and RCE filings for individual technology centers. This increase in office-action issuances and RCE filings likely requires applicants to invest substantially more money in procurement of a patent. (In our Law360 article [http://www.kilpatricktownsend.com/~/media/Files/articles/2014/Secret%20Patent-Examination%20Program%20Rare%20But%20Consequential.ashx], we estimate the additional costs to be roughly $7000.)

Concerns and Oddities Surrounding SAWS

The PTO is Not Recognizing the Impact of SAWS

This data seems to suggest that the enhanced scrutiny of SAWS is not innocuous. Nonetheless, the PTO seems to be in denial of the data that the agency itself provided. As reported by Corporate Counsel [link to: http://www.corpcounsel.com/id=1202716358836/Data-Shows-Impact-of-PTOs-Secretive-Patent-Program] a PTO spokesperson said, in response to this data that “any time added to the prosecution of the patent is usually minimal.” Given that the average added delay is three years, this assessment seems to be inaccurate.

The PTO is Hiding its SAWS Classifications

The PTO has been repeatedly asked, by us and by others, to indicate whether particular applications are being evaluated under SAWS and/or to identify all SAWS applications. The PTO repeatedly refuses to do so. The agency asserts that the information is privileged as part of an agency’s deliberative process. Dennis Crouch has previously explained why he believes that this privilege assertion is misplaced. [Link to http://patentlyo.com/patent/2015/01/sensitive-application-warning.html] Even if the privilege was proper (which the authors concur is not for multiple reasons), such privilege in this instance could be waived by the PTO. For the sake of transparency and to allow applicants to stay informed as to the true status of their applications, the PTO should choose to release such information. Such disclosure would also allow applicants to be able to identify who the true decision-makers are in relation to SAWS matters, rather than undergoing frustration with seeming inconsistencies between conversations (at which allowable subject matter is identified) with an examiner and official papers issued by the office (nonetheless rejecting an application).

SAWS Violates Proper Rulemaking

If we assume the SAWS program is a procedural, and not a substantive, rule, the PTO could have authority to promulgate such a rule. (The PTO does not have authority to make substantive rules.) However, procedural rules must be appropriately enacted. The PTO frequently complies with informal notice-and-comment rulemaking procedures (e.g., as opposed to formal rulemaking procedures). However, with regard to SAWS, neither notice nor comment opportunity were provided.

Up until December 2014 (shortly after our first Law360 publication http://www.kilpatricktownsend.com/en/Knowledge_Center/Publications/Articles/2014/12/Secret_PTO_Program_Subjects_Apps_To_Heightened_Scrutiny.aspx conveying to the public the SAWS information we received), the PTO seemed to have no mention of SAWS on their website or in the MPEP. Even the new PTO website acknowledging the program [http://www.uspto.gov/patents/init_events/Sensitive-Application-Warning-System.jsp] does not include any information about how the program actually works. Rather, it merely speaks to the program’s purpose and downplays effects on applications’ examinations.

SAWS Violates Due Process

Possible property rights seem to be affected by SAWS. Applicants subjected to SAWS appear to be less likely to be patented, and patent issuance is delayed. This delay in issuance may preclude an applicant from protecting an invention during a critical time (e.g., critical in view of a competitive landscape, litigation, or investment opportunity). Despite these consequences, the PTO does not abide by fair procedures in relation to the program.

There is no clear criteria indicating what types of applications will be subjected to SAWS. Rather, the very broad, extensive SAWS-eligibility list could seemingly qualify many more applications to be reviewed under SAWS than the reported 0.04%.

Further, there is no disclosure as to how the program actually operates and which applications are affected. This precludes applicants from challenging or even understanding SAWS designations and immunizes the PTO from improper selection processes.

Our Call to the PTO: Be Transparent about SAWS

The PTO claims that SAWS is a mere quality-control effort, that SAWS applications undergo the same examination review as other applications, and that the SAWS process minimally affects processing delays. Nonetheless, to outsiders, this program is suspicious for at least the following reasons:

  • One of the top SAWS-eligibility criteria relates to reducing PTO embarrassment.
  • While the PTO has repeatedly asserted that SAWS does not affect examination delays, we have shown that contention to be wrong.
  • The SAWS-eligibility list could seemingly qualify most patent applications for SAWS, while only 0.04% are entered into the program. Thus, the actual SAWS-selection criteria is unknown to the public (and creates bias opportunity).
  • SAWS violates the PTO’s rulemaking authority.
  • SAWS violates due process.
  • The PTO has refused to identify which applications are in SAWS, such that it appears as though they are attempting to make the program immune from challenge or embarrassment.

If this program is a fair program, we call for the PTO to release the SAWS application numbers and, going forward, to inform applicants when their applications have been selected for SAWS review. We are not alone in this call, as attorneys from a variety of firms [http://www.law360.com/articles/614522/attys-want-uspto-to-open-up-about-sensitive-patent-apps] stand with us in asking why the PTO has kept this program a secret for decades and why the agency is reluctant to be transparent about its prior and current SAWS reviews.

 

 

149 thoughts on “Guest Post by Dr. Gaudry and Prof. Tu – Our Call to the PTO: Release SAWS Data

  1. It is clear to me that we need more Forward Thinkers at the USPO. It feels as if they have been doing their level best to thwart new and exciting emergent technologies. Why this is exactly is unclear to me. I got somewhere that they were afraid of being derided if the patented some outrageous thing that didn’t work.
    Personally I believe that they should patent every single patent that has been presented, especially in the medical and energy production areas. For crying out loud if there is nothing to some of the patents that they issue, so what. What harm has been done. However if they hold up patents that promise to change the world they do the entire world a major injustice.

    Paul Maher
    coldfusionnow.org

  2. Some of this chicanery is more aggravating than other parts. These ding dongs at the Patent Office are clearly not up to speed with the development of LENR. Although somehow or other 7 Patents have now been issued by the USPO.
    The world so needs what this SAWS program has been trying to hold back that it makes my head hurt. Condensed Matter Nuclear Science is no fraudulent deal. When you saturate some metal lattices with Hydrogen or Deuterium things begin to heat up. Check out some of videos of Iraj Parchamazad. He loads Palladium doped Zeolites with Deuterium and it works just fine. We could be out from under Fossil Fuels thumb in 5 or 10 years if the USPO would get on the ball.

    Paul Maher
    coldfusionnow.org

  3. Just wondering why the USPTO does not release the application numbers? Maybe the USPTO is hiding this information because it will show that the SAWS program was targeting certain inventions of certain companies, or maybe even specific law firms, attorneys or agents. I wonder if the USPTO has a ultra-secret “blacklist”, similar to a “no-fly” list at the TSA. (I hear the non-conspiracy people groaning at that one). The release of the applications targeted would conclusively prove this on way or another – unless the list of applications provided was incomplete or purposefully wrong. There is a waft of political corruption here, which could jeopardize and tarnish that whole reputation of the USPTO as being fair and providing due process during prosecution of an application. I would like to know who instituted the SAWS program, under what authority and why. If a law firm or corporation had information to back up their claim about SAWS delay, who or what should be held liable for such unconstitutional breach of due process (or to recover the $$$$$ spent on applications that unknowingly fell into this deep SAWS morass)? Just wonder if each reply now needs a standard paragraph that would request the USPTO to identify whether the application is being examined under the SAW program. Just wondering…

    1. Most inventors might agree to have their pending applications published, if informed that their application is in SAWS. They might want as many of the public as possible scrutinizing the prosecution of their application.

      1. … and let’s not forget that in the minimal disclosure that the Office has revealed since the recent SAWS program news blast, SAWS is but one of many undisclosed “quality” programs.

        What else is there lurking?

        1. What else is there lurking?

          You mean besides the “Gestapo”?

          LOL.

          Get your tinfoil hats right here, folks.

          More invalid, junky patents are being granted now than ever before in the history of the country. But the patent maximalists are sooper dooper concerned about “secret” efforts to improve “quality.”

          Try to believe it.

  4. I know how to find out if there is something amiss.

    Ask the PTO to tell us every application that has received 3 NFOAs in a row without any claim amendments.

  5. Is the promise of transparency in government just that, a non binding obligation?

    Clearly the criteria for the SAWS program should have been published.

    Moreover, I agree that one should be notified if their application is move into SAWS, because if one needs a patent quickly to protect his or her product, to obtaining financing for his company, or the like, then one needs to know that the application is receiving special scrutiny, etc. The denial to the applicant that this is occurring can be a denial of due process.

  6. “Given that the average added delay is three years, this assessment seems to be inaccurate.”

    To play devil’s advocate: that the SAWS classification adds a delay is presumptive. It must be at least partly true that the applications targeted by SAWS are already those tending to longer pendency. We can just as easily blame slower applications for attracting SAWS as we can Saws for slowing the applications assigned to it. I imagine the statistics cited reflect a little bit of both.

      1. Once we get beyond 4 or 5 years, a lot of them are going to be abandoned, due to high accumulated prosecution cost and lack of progress. The pendency might be a lot longer if not for all the abandoned applications.

    1. Exactly. Correlation vs causation. I appreciate the effort that went into the article, but evidence of causation is needed. The section title “The PTO is Not Recognizing the Impact of SAWS” is loaded. It presumes that there _is_ an impact. Where is the proof?

      1. If the call is I open the blinds and cast some sunlight on the matter, why do you think that causation need be proven?

        It does not – correlation suffices as the status here is not one of “proven conclusions,” but rather one of “hey, there’s something fishy going on.”

        It’s when the data is brought into the sunlight is when the real “fun” can begin.

        There remains NO viable reason yet why secrecy remains in place (with the slight exception of course to the point Ned made about some applications possibly being pre- or no publication status).

        Secrecy begs the point that something is being hidden.

          1. Perhaps not.

            But importantly, perhaps some change will come with the antiseptic of sunlight. Changing “everything” is a bit of a dissembling throwaway, eh?

            What are you so afraid of, that you insist on attempting to belittle those asking for non-secrecy?

  7. USPTO should make a rule stating that they will publish the number of every public application file subjected to formal quality review identifying the quality review program by name…..Let the chips fall. Show us the claims. Then, it won’t be about secrecy….maybe, it will be about the crazies.

    (On a side note….waiting for a blog post on the “I want a second pair of eyes” proposal)

    1. Yes, this. What client in their right mind would request, as often as possible, a second examiner to double check the Office Action if they disagree?

      Unless there will be a substantial fee, or it turns into just rubber stamping the examiner.

      I was honestly unsure whether they were for real when I saw that suggestion, to let the Applicant request the Examiner’s action be submitted for the second set of eyes.

  8. The “pioneering scope” category bothers me.

    According to the logic of the patent regime, someone that puts the time and money into developing a technology of pioneering scope should receive a limited monopoly to recoup his investment and perhaps achieve some reward.

    Without a strong patent regime, why innovate? Better to wait for someone else to do it and then steal the technology.

    SAWS seems to dovetail with an effort to impose a Gramscian intellectual hegemony to delegitimize patents.

    Superficial analysis of the political economic history of industrialization in the USA, Prussia, and Russia often claims that these states rejected economic liberalism and strong intellectual property regimes in order to foster economic development.

    Misunderstood or without nuance such analysis turns into a claim that a strong IP protection regime is bad for innovation and industrial advancement.

    Once such an intellectual hegemony is established, officials at the USPTO begin to think their job descriptions include squashing patent applications that are pioneering.

    link to muse.jhu.edu

    link to politicalaffairs.net

    (It does not take much to go from ben-Atar’s misunderstood history to:

    link to criticalcopyright.com )

    Then foreign firms (and non-innovative US firms) can just troll trade shows for technology to steal, and the USPTO facilitates the transfer of technology from innovators to non-innovators that then take large chunks of American markets with little effort.

    None of this stuff requires any direction beyond funding some “academics” to write papers to support certain theses about intellectual property. That is the value of creating a Gramscian hegemony. It works on autopilot.

    And then the minions of the Gramscian hegemony crawl out of the woodwork to tell us not to worry about SAWS because SAWS only affects a minuscule number of patent applications.

    We really have to ask cui bono with respect to SAWS and a weak patent regime in the USA.

    It does not take the loss of dominance in a large number of technologies to change the market dynamic.

    In another context the Swedish statesman Axel Oxenstierna wrote, “An nescis, mi fili, quantilla prudentia mundus regatur?”

    1. Without a strong patent regime, why innovate?

      Maybe you should ask a member of the vast majority of people who innovate all the time and who don’t rush to the patent office to protect that innovation.

      Or just your brain to come up with one of many reasonable answers.

      I really, really, really love the high falootin’ history lesson you think you’re giving here but your opinion about what constitutes a “strong” patent system seems to lack a few details.

      For instance, many people (myself included) believe the patent system will be strengthened by these changes and other changes that will (as paradoxically as this may seem to somone with your beliefs) result in less patents being granted instead of the absurd number of patents that are currently being handed out.

      1. Malcolm, You have an exaggerated view of your innovativeness.

        Your mobile apps may be creative, but I doubt there is anything innovative in them.

        Why don’t you list your innovations for us?

        In any case, there have always been far more innovations than there have been valuable innovations. So what if people patent their less valuable innovations?

        The real problem lies with examiners and programmers that can’t distinguish creativity from innovation.

        Alice’s programmers probably thought just as you do that they were innovators, but they just computerized (possibly creatively) something that had been done from time immemorial.

        1. The real problem lies with examiners and programmers that can’t distinguish creativity from innovation.

          The real problem is people like you, Joachim, who believe that innovation in every field requires patents.

          1. Typical Malcolm and more dissembling.

            innovation in every field requires patents”

            “requires”…?

            Where is this notion of “requires” coming from?

            Is this aligned with your typical implications of “patents should only exist for the ‘but for’ efforts”…?

            Please stop the dissembling. If the field is in the Useful Arts, then the option is open to inventors to partake in the patent system. This is a good thing. See Abraham Lincoln’s thoughts on the matter.

            More patents** all the time, easier to enforce IS a good thing.

            That’s why we have the patent system in the first place.

            ** and yes, I do mean more valid patents, examined well, so let’s leave out your dissembling and false statements that I do not want quality examination. I have forever and a day been consistent about rubber stamping Accept-Accept-Accept is as bad as rubber stamping Reject-Reject-Reject. But yiu do not – and can not – get there through “whatever” means. You really do need to realize that the means matter.

  9. “why the PTO has kept this program a secret for decades”

    Since the program has not existed for decades, I’m not sure how the PTO could have kept it secret for decades.

  10. Only in the US would someone try to make hay out of a “lack of transparency” in a system while ignoring the fact that the same system expressly permits the secret prosecution of patent applications (and, until very recently, allowed individuals to exploit that secrecy to the tune of many millions of dollars at the expense of a great deal of the public’s faith in the system).

    Nearly 10% of US applications are still prosecuted in secret with zero public oversight. That’s roughly two hundred times the number of “silly” or “potentially industry disrupting” applications that are internally flagged for an extra set of eyes to ensure that the law is followed when the PTO examines them. And it doesn’t include the submarine patents that were filed twenty years ago and which, because of the completely lunatic system that was put in place, will have 17 years of pendency when they do issue.

    1. Those are two very different things that you are conflating Malcolm, at the same time that you know that you are omitting important facts – such as what the Quid Pro Quo actually is, the personal property nature of the granted patent, and the dissembling that you are doing as far as any type of “in secret” prosecution under a non-publication request (zero public oversight…?).

      You know this is a false picture that you paint and it is reckless to do so. You whine about “lowest form of innovation” while employing gutter tactics in your quest of weakening patents at every opportunity that you can, regardless of the historical foundations of how the US patent system was put together.

      For shame.

      1. Below at post 7, I asked a simple and straightforward question of “why secrecy?”

        That post is repeated here as to direct back to the real issue and away from Malcolm’s attempted obfuscation.

        So to this straight forward question we have 6 clenching tight his eyes and elsewhere Malcolm attempting to kick up dust by obfuscating a very different thing of making sure the bargain of Quid Pro Quo is met and the nature of a granted patent as personal property with some type of “even worse secrecy”…

        Neither of these tactics actually answer the question though.

        Come, let’s see some actual answers and let’s put aside the rhetorical tricks.

        1. imho….USPTO, as a part of the U.S. gov’t., does not want to be placed in a position of publicly stating that any specific patent is “more valid” than any other patent. That would infer that one patent may be more valuable than others of equal scope. At the least, on the margins, this would affect the value of companys and corporations i.p. portfolio (stock price). (If you don’t think that a patent granted after “enhanced examination by many examiners” would be more deemed more valuable by the investing public than a patent granted after examination by only one person, we are speaking past each other.)

          1. Mzi,

            Your answer (while appreciated) simply does not fit with the rest of the rhetoric that nothing “special” is going on and that the examination is exactly the same.

            You can’t have both – the same and not the same.

        2. You do deserve a straight answer on this anon, so I’ll give you mine:

          For me it is enough that my superiors have clearly expressed a desire that it not be made public, as they are fighting to keep it secret. Nobody has told me to keep it secret. I am under no directive, I simply don’t actively seek to antagonize them for something that I feel doesn’t really involve me, as I am neither an applicant, nor someone who handles a SAWS case.

          As to why they want it secret, I am not them so I can’t tell you, but I have strong suspicions. I am of the opinion that they should just dump all the data, as it is clear that the paranoid theories here are far worse than any reality could be.

          1. the paranoid theories here are far worse than any reality could be.

            And they always will be. After all, you’re responding to a guy who equated the PTO with “the Gestapo.” He high-fived his best buddy here when his best buddy compared patent reformers to “jihadists” and “rapers and killers.”

            But they really care about good examination! You can trust them. They’re very serious people.

            The simplest explanation for why the PTO wants to keep its internal operations internal is to avoid creating a precedent where some Internet nitwits create fake “scandals” every other week that work to make the PTO’s job harder, not easier.

            If you start from the easy-to-reach understanding that all “anon” and his cohorts reall want is to more patents, all the time and and easier to enforce (because there aren’t enough now, somehow, even though there’s vastly more than ever before in the history of the system), then all their fake “concerns” (about “separation of powers” etc) start to make perfect sense. Try it and see.

  11. Jason: the SAWS program seems to be designed to allow the PTO to arbitrarily heighten the criteria of patentability for certain applications.

    Arbitrary? Seriously?

    Here’s the “criteria” that you found problematic:

    “dealing with inventions, which, if issued, would potentially generate unwanted media coverage;”

    “disclosing seemingly frivolous or silly subject matter;”

    “with claims of pioneering scope;”

    “claiming the prevention or curing of diseases which were previously considered impossible to prevent or cure, such as … Alzheimer’s disease, … [or] HIV infection;” and

    “[directed to] smartphones and other convergence-intensive devices.”)

    Why in the world would we not want a patent office that pays particularly close attention to the examination of claims that fall into these categories?

    Of course, what’s especially amusing to any careful observer of our patent system over the past 10 years is how ineffective this program appears to be (because, whatever the criteria, the number of affected applications appears to be sub-microscopic at best).

    Potentially, these SAWS applications include “silly” applications (however that is defined), or potentially these SAWS applications include a novel drug that will cure Alzheimer’s disease.

    There’s a very good chance they include some applications claiming “novel” cures for Alzheimer’s (and a variety of other diseases) that are also incredibly “silly.” Or some “novel” applications of using your “mobile device” to communicate a particular “kind” of information that is also incredibly “silly.”

    Of all the troublesome internal shenanigans that surely lurk behind the walls of the USPTO, why focus on the one that not only impacts the least number of people but also the people who are almost surely able to absorb whatever impact there is without interrupting their vacation in the Caymans? Sheesh.

    1. …only impacts the least number of people… At least when we take half the property from the top 1% and redistribute it, we know the income of those from whom we are taking. In this case, do we really know that those we are stealing from are vacationing in paradise? Or, are we actually helping incumbents maintain their monopoly by delaying a new comers patents (because it might prove to be embarrassing to issue one to the new guy)? It is taking, either way.

      1. Anon2,

        Your post highlights a jarring dichotomy that runs rampant in Malcolm’s oft-repeated memes.

        He seeks to deny patent protection wholesale to a form of innovation available to the common man (NOT the 1%ers as he so often misrepresents) by wanting to deny de facto eligibility to ALL software, yet he also wants patents ONLY (invariably expressed implicitly as he seems to have trouble being direct about this) for those things that only those with lots of money can afford to develop (his oft implicit ‘patents are for the “but-for” expense things).

        Why is he so dead set against innovation that can be undertaken by the less advantaged, so for ONLY protection for the advantaged, and yet attempt to spin himself as “against” the über rich?

        He is obviously a deeply conflicted individual.

  12. First of all, supervisors dont need a secret program to arbitrarily extend prosecution. Even a primary’s actions can be pulled, with or without saws.
    Second, correlation doesnt necessarily imply causality. Saws cases are flsgged for being sketchy it shouldnt be surprising that they would be subject to extended prosecution and have a lower allowance rate, with or without saws.
    Keeping secrets sounds bad but saws is far from the biggest problem. the pto also does not tell you when actions are pulled randomly for quality review. Thats even secret from examiners.

    1. >Saws cases are flsgged for being sketchy it shouldnt be surprising that they would be subject to extended prosecution and have a lower allowance rate, with or without saws.

      Look. All we are asking for is the PTO to do its job. If the PTO wants to assign extra people to a case that is fine with me. But a secret label that it is not to be allowed is not OK.

      Why do you keep trying to conflate and confuse the issue? It is not hard to understand. And what is more shocking about this is that the PTO has the resources do this fairly. Simply tell the applicant that their case has extra people working on it and then PTO keep to your normal deadlines.

      What you don’t get is that with the secret label you fight the rejection and another pops up, and another one, and another one, …..

      You get it? Not OK. OK for PTO to put more effort into an application, not OK to secretly mark an application as not to allow.

      1. That does not happen Night Writer.

        How do I know? Well the same people that want to keep the curtain wrapped on this keep telling us that.

        Why should we not trust them? Who needs to have all the business of the Office conducted in writing anyway?

        /off sardonic bemusement

      2. “But a secret label that it is not to be allowed is not OK.”

        Nobody ever said it has a “secrit label” that it is not to be allowed.

        1. Nobody ever said

          LOL.

          Did you intend that irony 6? (or do you still have your eyes closed as to the problem being what is not being said on the written record…?)

  13. Jason: Further, it would appear to prevent the applicant from being able to talk to (via an interview) or even identify the decision-makers controlling an application’s f te.

    Like all applicants, if you’ve got a real problem on your hands, you talk to the Examiner, then the Examiner’s supervisor, then the supervisor’s supervisor, and so on up the chain. Ultimately it’s the director’s call.

    Of course, if your complaint is based on bad facts or law or pure conjecture, the chances are good that you don’t get very far.

  14. Jason: This enhanced-scrutiny review can negatively impact the applicant. For example, it would likely result in a reduced probability that an application would be allowed, an increased number of office actions issued and an increased pendency.

    Or it could assist the applicant in the obtaining of valid claims, thereby providing a substantial benefit for both (1) the applicant and (2) (more importantly) the many, many members of the public who would otherwise be seriously, adversely affected.

    1. Your “more importantly” shows an evident bias against the fundamentals of the Quid Pro Quo (you are doing that edge of field of grain thing again).

      With patent “friends” like this, who needs enemies?

    2. “MM–no. As usual you are just filling us up with your anti-patent propaganda. The problem is that if it is marked as not to allow, then the examiner doesn’t have to spend the time to make sure the rejection is good. They know they will get support to re-re-re-re-re-reject it.”

      That’s not a problem with SAWS and your remedy is appeal, to the fed circuit if you need to. Or filing a district court action.

          1. 6, my experience was that the PTO keep rejecting the application.

            How do you tell a client about that? And it would have had to be a mandamus action as the PTO didn’t let me appeal, they just keep issuing new rejections.

            You know think about the client. An application gets marked for non-allowance. Time goes by, the bill gets large. They want to know what in the world is going on.

            1. “How do you tell a client about that?”

              Let me get this straight. You had an application where someone told you it was in SAWS and that there was someone else helping with the examination demanding more rejections be made, and the examiner on the case was happy to oblige making them but he wouldn’t tell you much about SAWS as a whole (because he was a jackas or maybe someone new). You then received rejection after rejection that you disagreed with, and felt like you couldn’t appeal. You did not contact the spe or the director and ask them to put their best foot forward and then let you appeal and be done with the app. You also did not ask why on earth there was something special/embarrassing/etc about the application that was causing difficulty.

              Am I right so far on the facts as best I recall them?

              If so, here’s what you do. First, you do the things above that I just mentioned that you did not do. Then you report to the client that they feel that their app is silly/special/embarrassing etc. for the following reason. Then you ask them if you’re doing a good job actually capturing what they’re wanting to claim since you’re actually for srs and there shouldn’t be any real issue with the claim in your opinion. If they say yes, then you tell the pto why it is your position the app is not embarrassing/special/etc. and discuss the situation reasonably. If they persist be sure to make sure the director is on board with the goings ons, and will not let you appeal.

              After all that, then yes, you may have to file for mandamus or file in the DC. Though if you’re so bad as to have it come to all that then you may want to simply bring in someone persuasive to help you out on the case, such people exist for hire.

              “An application gets marked for non-allowance. ”

              It isn’t “marked for non-allowance”. It is marked simply as sensitive for one reason or other. And if its gone that far then you should take whatever reason they marked it as such for srs and see about simply alleviating that concern via one of a thousand techniques.

              “Time goes by, the bill gets large. They want to know what in the world is going on.”

              I bet it does.

              1. 6, it is a long story. The application was in the PTO 10+ years. The claims were not silly, but very broad. The client was a huge international tech company. I can see why the PTO was worried about the claims.

                The examiner would admit that the rejection was not good, and say he would issue a new rejection, which he would after a long time. Talking to supervisors got me no where. Lots of local assurances and then yet another rejection. (Actually, thinking about it I am pretty sure there was an appeal that took a couple years that we won too, but which resulted in a new rejection.)

                That is the game. The PTO can just delay the application indefinitely.

              2. “I can see why the PTO was worried about the claims.”

                Then either a. narrow them, take your scope you can get that will probably be fine anyway, and file a con to continue fighting (probably with a new examiner and where the CON probably doesn’t even get into SAWS) or b. nut the f up and raise some he ll. Or C you can also just file a con anyway and do the fighting in the original app but file the amended claims in the CON to get at least decent protection that they wouldn’t object to.

                Or else keep spending huge sums the way you went.

                Your choice.

                ” Lots of local assurances and then yet another rejection.”

                I don’t know why you’d be assuaged with “assurances” after a few rounds of what you’re describing. Go ahead, talk to the director of the TC.

                ” (Actually, thinking about it I am pretty sure there was an appeal that took a couple years that we won too, but which resulted in a new rejection.)”

                So then appealing didn’t work out for ya (superzing!), file in the DC if you think your app was sooooo great that you should have had a patent long ago. That’s why you have options. If the claim was sooo broad, and presumptively valuable, then take it to the DC. Don’t just sit about like a chump. I honestly don’t get why you didn’t have an interview, in person if necessary, wherein, if they say on third round of pros. that they admit their rejection is no good, then ask them to draft the NOA in your presence, and if they will not, then ask just why not and what the hold up is. Try to keep your cool throughout.

                Also, from your facts it doesn’t even seem like you were in SAWS, you just had a broad claim that nobody wanted to give you. Boo hoo, it happens. Ask the courts for it.

            2. “6, my experience was that the PTO keep rejecting the application.”

              That’s often going to happen if you have more than one person keeping having their opinion on a case.

              Sorry, that’s how having more people on an app works. Su cks, but that’s just how that balls bounces.

              “as the PTO didn’t let me appeal”

              Call the director and ask him to let you appeal. He will. We’re aware of this “they want to appeal but aren’t being allowed to” and the directors are all on board with letting you appeal when it is reasonable to do so and in my experience it has been anytime you want to.

              1. “Call the director and ask him to let you appeal. He will.”

                Well, some TC Directors are “she” actually, but this is correct. If you file a brief, and the examiner re-opens, not much you can do, but if you file a second brief in response to the re-opening and the examiner re-opens a second time, pick up the phone. And don’t mince words. Tell the TC Director that you’re filing a third brief and if you get anything other than an examiner’s answer or notice of allowance, the TC Director is going to be be wiping your footprints off themself as you step right up on over their head. Works every time.

              2. BTW, this is why you should always file a PABR (pre appeal brief request). If you file a PABR, and get a Notice of Panel Decision instructing you to file your brief, and if you do and you get anything but an examiner’s answer or notice of allowance, pick up the phone. Pick it up.

              3. Well, maybe I could have been more aggressive. I was, by the way, the aggressive persuasive person in the law firm the a 10+ year case was transferred to.

                I remember like 9 months or something like that for yet another NFOA to be issued by the examiner.

                I also remember the examiner telling me how he would have to go to other people who said they knew of other references that could be used to reject the application.

                It sure looked to me like a secret do not allow tag was added.

              4. “Well, maybe I could have been more aggressive. ”

                It’s not aggression. It’s letting the examiner and SPE know that you’re not going to put up with any baloney. Don’t assume the TC Director is in on it. Lots and lots and lots and lots and lots of shenanigans from examiners and SPE’s are done with the hope that the applicant isn’t going to call them on it.

                “I remember like 9 months or something like that for yet another NFOA to be issued by the examiner.”

                After about 4 months, call the examiner. Once a week at first. For about a month. After that, every day. After about two weeks of that, start calling the SPE. Maybe not every day, but enough to make your point. If you’re at 6 months and no response, call the TC Director.

                “It sure looked to me like a secret do not allow tag was added.”

                That’s possible. But you don’t know who put the tag on it. Sometimes it’s a primary and he/she’s hoping you don’t call their SPE. Sometimes it’s an SPE and he/she’s hoping you don’t call their TC Director. Sometimes it’s a TC Director and he/she’s hoping you don’t call the Commissioner.

                As Dalton said, “Be nice. Be nice until it’s time to not be nice.”

                Stop trying “to work with the examiner” or appease the examiner. If the rejections are improper and the case is appealable, appeal. If you get the re-open, rinse, repeat treatment, pick up the phone. It works.

              5. “I also remember the examiner telling me how he would have to go to other people who said they knew of other references that could be used to reject the application.”

                Then by all means, get their phone numbers and names as well. And ask him to get to compiling the references already and putting them on the record.

                “Well, maybe I could have been more aggressive.”

                Yes, I get the feeling that half of the btching on here from attorneys results from their either being way under “aggressive” or way over “aggressive”. Prosecuting patents is dealing with people, you’ve got to learn that aspect or you’re just going to have a lot of btching to do.

                “As Dalton said, “Be nice. Be nice until it’s time to not be nice.””

                Unless you’re dealing with a feminist. In which case, do not be nice or else they will take offense.

              6. 6, it is good that you contribute to this as your perspective as an examiner is great to hear. But, seriously, try not to talk down to people. Take your own advice regarding those people skills.

              7. I’m busy talking down to you because you came up with a wild (semi-conspiracy) theory that your app that wasn’t allowed because it had some imaginary tag that it wouldn’t be allowed or was in SAWS. Sometimes an examiner just doesn’t think a case is allowable over art he or someone else dreams of. (The only cure for that situation btw is to get them to clue you in on whether they prosecute based on the references of record or on references existing in their own or other people’s heads.)

                It’s very similar to what you do with other situations here on PO. And it is absurd.

              8. 6, you are talking about an application that was in prosecution 10+ years when I got it. Moreover, paranoid? I don’t think so when the SAWS program was a secret until recently. Additionally, the examiner said he thought it should be allowed but that others thought differently.

                And there were repeated NFOAs (and a win at the board).

                AAA JJ suggestion and yours of going to the TC was probably what I should have done. But, even then I don’t know that it would have stopped.

                What I find incredible is that you don’t see the injustice in the PTO repeatedly issuing NFOAs and delaying prosecution of the application at every turn.

                And just read the article above in the WSJ about pharma industry. That is the way DC works. I grew up with a lot of the people that run this country. I know how Washington works 6.

              9. “AAA JJ suggestion and yours of going to the TC was probably what I should have done. But, even then I don’t know that it would have stopped.”

                When you have the director failing to “stop” it that’s when you go to the courts. That’s just straight you vs. “the man”.

                “What I find incredible is that you don’t see the injustice in the PTO repeatedly issuing NFOAs and delaying prosecution of the application at every turn.”

                Don’t get me wrong, I do. But I have less pity when people let their case drag on for 10 years. 4 years. 5, maybe. 6 if you’re lazy. 7 if you’re lazy and just don’t like your client’s app that much. But 10? My pity quotient is rather low by then.

              10. Since Gil Hyatt is taking it to “the man,” is he your model then 6?

                Can you check and get the inside skinny to see if his applications are in the SAWS program?

  15. This is nothing more than yellow journalism. Shame on you, Mr. Rantanen.

    When an application is entered into the SAWS program, multiple other people (seemingly up to eight or more people) must review and approve examiner-proposed notices of allowances.

    Examiners decide patentability – if anyone else is involved, it’s in a supervisory capacity. It’s still an examiner deciding patentability. If an adverse decision is made against an applicant, it is by the examiner. It will be signed by the examiner. The applicant can call the examiner to discuss the adverse decision, the applicant has the opportunity to respond to the examiner in writing, and the applicant can appeal the examiner’s decision. This article does nothing but spread Mr. Rantanen’s paranoia that some shadow government is doing the examiner’s work.

    This is just shameful anti-government tea baggery.

    1. My personal experience was that an application I prosecuted did appear to have actors behind the scenes directing the prosecution of the application. I was told pretty much straight out by the examiner that it did not matter that it was a bad rejection as there would just be another one coming. The application had been in prosecution more than 10 years.

      And many others have had the same experience. So, how about the PTO come clean about this program. It may be that we are wrong, but until the PTO comes clean, we aren’t really going to know are we.

    2. >>This is just shameful anti-government tea baggery.

      What nonsense. You anti-patent people are always trying to reverse the roles. The pro-patent people recognize the value of the a sophisticated society that issues patents.

    3. I did not write this post. The authors are listed in the post title and the bio at the beginning of the post. That I posted it should not be taken as my endorsement one way or another of the authors’ views. I will often post perspectives that I don’t agree with.

      (Of course, this also doesn’t mean that I necessarily *disagree* with the authors’ point.)

      Also, you are aware of the dual meaning of “tea baggery,” right?

  16. The authors state that one of their concerns is that SAWS might implicate procedural due process because “Possible property rights seem to be affected by SAWS.”

    This conclusion is clearly wrong, right? Maybe I’m missing something. As we’ve discussed, the property right you have in a patent exists after it issues. Before it issues, you have nothing. At least, that’s my understanding.

    1. Then your understanding is incorrect. There has always been right to ‘sue out a patent.’ But then again, we have the perpetual ‘by your leave’ view of the Kings’ patent grant, as codified in the AIA.

  17. This program is a teeny tiny miniscule fraction of the second pair of eyes program that impacted every single application. As such, it’s hard for me to get too worked up about it.

          1. Well yeah, it was. Until J. Marshall, in his brilliance, took the opportunity of deciding the case to declare the power of judicial review for the Art. III courts. If any case in the SAWS program presents a similar opportunity, hopefully will have a judge as good as Mr. Marshall on the case.

            1. Kind of the point is that some times great big things come from little starts (no matter how many times people might say “pay no attention to that man behind the curtain,” as the booming Oz voice sounds out “trust us, this secrecy isn’t hiding anything you need to be aware of)”

              A little amusement: link to youtube.com

      1. Night,

        I had my share of cases hung up in the second pair of eyes review years ago. It was annoying, no doubt, but nothing I’ve seen and read about SAWS convinces me it is worse than the second pair of eyes program. And the number of cases it affects is, in fact, miniscule compared to the number of cases second eyes affected (i.e. all of them).

  18. The US Patent Office needs to be reformed. Simple recommendations:

    A. More transparency – SAWS is unnecessary in view of AIA proceedings and lacks transparency. How does the Director decide which applications to review, etc.? SAWS would be much less necessary if made other reforms (below).

    B. Why examine all patent applications? Let them be filed to get a date, published and only examined if applicant (or any third party) pays fee to exam. Otherwise, let the application die without examination. This would reduce workload and allow examiner’s to focus on important high value (e.g.,, any value) applications.

    C. There are good/great patent examiners but also others who are either incapable or unwilling to do their job. Anybody who has prosecuted patent applications cannot disagree. “Bad” examiners costs clients a lot of money (either because they too easily issue applications or too tough – there are bad examiners at both ends of spectrum). There are also weak admin folks who either need to be better managed or replaced. The only consistently good service I receive is when dealing with the electronic filing help desk – those guys are great.

    There are likely other reforms but the goal is to review from top to bottom and improve.

      1. It was–the U.S. had a registration system in the very early 1800’s. It overwhelmed the courts with cases seeking invalidation.

        1. Option B is not a registration system (per se) – it is paying for nothing that you cannot get otherwise (publication//filing date).

          If you have no plans to prosecute to begin with, what is the motivation to file? None. If you plan to prosecute, the option not to is meaningless.

          When we had a registration system on the other hand, ALL applications went that route and there was no other options.

          Now if you want to discuss a different option of re-instituting a registration system for all (and eliminating the multi-Billion dollar innovation “tax” that currently is the examination that we have, then we can talk. I have in the past provided proposals for an information cataloging and publication service that could be run at less than 1% of the USPTO budget, and given the current fact that far less than 2% of issued patents see the courts, we can make some pretty good overall cost comparisons.

          1. Regarding B, there is already a pilot option to extend paying the filing fees for a year. That is, you get a filing date but postpone paying the fee and starting the examination until later.

            Why not extend for more than one (1) year? Seems like low hanging fruit to improve quality by allowing PTO to focus on fewer apps.

            Why would applicants use? Well, most patent applications are filed for new ideas. Most new ideas never get commercialized for a wide variety of reasons (in fact, most patents are never commercialized).

            So, allow applicant to get a filing date and try to commercialize, etc.

            If no one cares about during the 20 years of pendency and the PTO never has to examine. Simple goes away like a provisional (but gets published- this is key to third parties can see and decide whether to pay the fee to start prosecution).

            If, later, the applicant (or any anonymous third party) believes important, either can pay the fee to start the prosecution and the applicant prosecutes the application.

            Many patent applications (perhaps most) would never need to be examined.

            Allow the PTO to focus on only those patent applications that someone, anyone cares about.

            Currently, the PTO wastes too much time and resources on patent applications that cover inventions that will never be commercialized during the 20 years.

            1. Commercialization is not the only care involved.

              You are aware that there is not such requirement (to make) in patent law, right?

              In fact, often for improvement patents, the underlying patent is owned by another and there may not even be a right to make.

              I think that your bias is a bit too strong.

              Having said that, I DO see several niches that may want to play the deferred examination game (chief among them pharma) and that might use the delay to actually prove out the utility that is supposed to be there up front (at the time of filing), but that’s a different pet peeve…

              1. To clarify, I am referring to commercialization by anyone. Either the inventor, applicant or anyone.

                That is, after the invention is actually being used OR someone has in pipeline to use, either applicant or anonymous third party can pay fee to have examined.

                Yes, I understand there’s no requirement to commercialize your invention.

                My point is why invest in examination unless there is a concrete indication someone anyone will ever use the invention.

                Most patented invention are never commercialized.

                Yes, pharma is another great examine since takes time to confirm safe and effective.

                But applies to almost all inventions.

                Charge a fee for the applicant to defer examination.

                Still only get 20 years from effective filing date.

                Either applicant or anyone can pay fee to start examination.

                Focus on important inventions AND improve examination quality.

                There is no doubt in my mind this should be implemented.

                1. Splinter,

                  You ask why when I already told you.

                  So let me tell you again: there is no requirement to commercialize and the choice is (and always has been) up to the applicant.

                  If I invent something, want a patent on it, and want NO ONE – absolutely no one – to commercialize the item (and any improvement items that require my baseline item) that is MY RIGHT as the inventor – that is the basis of the Quid Pro Quo.

                  The point here is that your viewpoint presupposes something that is just not in the law. You build your tower without a foundation.

                  Your “should” only fits your errant view. That you lack doubt only shows that you have not thought through what a patent actually is (a negative right). You want something that is not a patent. You want something that is a positive right.

                  Our society is not built that way. That is the way of the State dictating far far too much (because they know what is important).

                  Sorry, but real innovation is not so known a priori as to what to focus on.

  19. A critical question that no defender of SAWS has even hinted at an answer:

    Why the secrecy?

    If this is a great quality program, if this is even merely a “notification” program, why the secrecy?

    And then, why the appearance of cover-up? Of “hush-hush, pay no attention to the man behind the curtain”…?

      1. Well then 6, obviously the comment is not geared to you personally, is it?

        Or do you want to pull your head out and note the larger world about you?

        1. Nobody else is being all the secrit either if they know what is up. Every examiner in the whole corps just had a refresher on this nonsense because of the higher ups keep on knee jerk reacting to sensationalist journalism. Nobody that I know of gives two rats ars es if you know about xyz about saws or not.

    1. So to this straight forward question we have 6 clenching tight his eyes and elsewhere Malcolm attempting to kick up dust by obfuscating a very different thing of making sure the bargain of Quid Pro Quo is met and the nature of a granted patent as personal property with some type of “even worse secrecy”…

      Neither of these tactics actually answer the question though.

      Come, let’s see some actual answers and let’s put aside the rhetorical tricks.

    2. anon, I think applications are required to be kept secret by statute. The Director cannot go about publishing applications numbers and then give any information at all about their content.

      That said, are the SAWS criteria secret?

  20. If an application is filed for an invention that Google or Apple might like to practice, then that application is referred to SAWS. The PTO then either ensures that the application does not issue or that the claims cannot be infringed.

    The question is whether the PTO’s staff itself determines which applications go into SAWS or whether Google’s and Apple’s attorneys make the decision.

    As Tim Cook acknowledges, “It’s good business to own the Administration.”

    1. Probably closer to the truth than anyone is comfortable with. PTO is an Executive branch agency – not an independent agency (like FCC) – although the way PTO spins the issues – it like to pretend it is.

      1. It was just a year ago that there was some hubbub about Miss Lee holding “stakeholder” meetings with undisclosed benefactors behind closed doors with the meetings not documented.

        Trust us” says the Executive branch whose mantra to get elected was “transparency.”

        Another Orwellian: All animals are equal, but some animals are more equal than others.

  21. Of particular concern is item 3 on the list i.e., “Applications with claims of broad or domineering scope and/or which have old effective filing
    dates (submarines)”. This makes all pre-GATT cases subject to fighting against a ghost. Someone behind the scenes is influencing the Examiner’s thinking or outright vetoing the Examiner’s decisions with no ability to explain the invention directly to that person.

  22. Most of this article is about how a subclass that – clearly by the memos the office has provided – are not randomly selected fails to display normative behavior with pendancy and allowance rates. That should be a surprise to no one.

    Notably, the article points out that SAWS applications have double the RCE rate and almost double the number of actions. That contradicts the entire premise that SAWS cases are poor examination (for example, a “reject reject reject” program). If they were making ridiculous rejections you would less RCEs (as more appeals would happen) or conversely see an outsized multitude of second non-finals, but instead there is a higher RCE % and a MATCHING number of actions to boot. This might suggest, for example, that SAWS applications have a lower second non-final rate than an application-at-large (which would logically be expected if multiple eyes were looking at the same document). This also makes it likely that the pendancy rate is due to applicants choosing to continually RCE cases they feel they can’t win an appeal on.

    Every application gets a different level of quality control, if you think your patent is getting treated the same as the next serial number I have a bridge to sell you. There’s different junior examiners, different primary examiners, different art unit workings, different TC directors, different QAS, different LIEs. Some types are subject to 101 groups, others are discussed in workgroup meetings, etc…It runs the gamut. Do you think the same amount of quality assurance is spent working on, for example, a complicated or terrible application than a simple, clean one? Which do you think is more likely to draw a second or third pair of eyes?

    tl;dr – Because you don’t know how the actual quality of the submitted work of a SAWS case compares to the actual quality of other submitted work, you can’t draw any conclusions as to how things “should” be. That’s simple logic. Everything presented here is entirely consistent with SAWS cases getting examined under the same substantive standards as any other case, but with a lower error rate. That’s kind of the point of a quality control program. That it might be an exceptionally effective at achieving quality is perhaps an example of “careful what you wish for” (of course, only a practicioner, and not the general public, could look at higher quality examination with that viewpoint).

    The above is to remind people who I’m sure are about to whip themselves into a circular frenzy that they don’t know. You don’t know, so you probably shouldn’t act like you do. That is entirely separate from the question of whether you should know, which is the heading and thrust of this article. On that issue, I can sympathize, and have no quarrel.

    1. I wouldn’t put too much emphasis on RCEs versus appeals. It’s very hard to know why a client will choose one over the other. Some clients never appeal; others appeal regardless of the situation. Personally, I recommend against appeals because of the high cost and incredibly long waiting period. On the other hand, if the case is very important, then perhaps appeal is the best solution. It depends on many factors.

      1. By the way, none of this means you’re wrong in your RCE analysis; it just means that it’s hard to know. It’s like an epidemiological study — you prove correlation but not causation. The correlation could equal causation or could be meaningless or could be somewhere in between.

    2. We continue to get from the anti-patent crowd this lack of respect for the law. If the PTO doesn’t think claims should issue, then find a good rejection. That is what the PTO can do and should do. Classifying an application as never issue is wrong. It is a complicated analysis, but it really does violate the Constitution to play that game and/or to hide what they are doing.

      What I find incredible is that an organization with vast resources cannot simply put the work in and find good rejections.

      Note that the anti-patent crowd continuously pulls out the “I just know” standard, which is against 2000 years of development of law. Every lawyer should find the “I just know” standard to be abhorrent and counter to western law.

      1. You would have a great argument if it in any way had a basis in the facts presented here or the truth of the situation.

        The evidence is that they ARE good rejections. The evidence is that SAWS applications DO issue.

        What I find incredible is that an organization with vast resources cannot simply put the work in and find good rejections.

        I would characterize the entire argument of people outside the agency as being one where “the organization with vast resources” actually brings those resources to bear on some examinations to produce better-than-average rejections. That argument would be more valid if every other application outside of SAWS received an equal amount of resources. They do not. It is not binary, it is a continuum of a sliding scale with SAWS anchoring one end of it. It always has been a continuum and it always will be because that is the nature of judicial process.

        Note that the anti-patent crowd continuously pulls out the “I just know” standard, which is against 2000 years of development of law.

        There is no debate about whether I know office procedures better than you. That is the point of this article.

            1. It certainly does not have the point that you know the office procedures better than Night Writer.

              What you “know” -as exemplified by your positions on pretty much any topic of patent law, is abysmal.

  23. “If we assume the SAWS program is a procedural, and not a substantive, rule, the PTO could have authority to promulgate such a rule.”

    Saws is not a “rule”.

    Who are you people?

    Saws is just part of the director causing an examination to be made. If he wants to take his time on some he can.

      1. The “criteria” being “applied” to their application are set forth in 35 U.S.C and 37 CFR.

        The “examination” is performed however the director causes it to be done.

        Either way, it isn’t that hard to dig up why people get put into saws, it’s just mainly anything that might be embarrassing to the office/gov, something that might cover a whole industry that has sprung up (we often don’t even catch those), etc. etc. there’s lists online.

        1. Actually 6, the criteria being applied is nowhere near 35 USC or 37 CFR – for the actual topic under discussion in this thread.

          That’s kind of the point.

          If this be “all that and a bag of chips,” why is not the entire protocol in plain sight? with proper notice to anyone affected?

          1. “why is not the entire protocol in plain sight?”

            The “proper protocol” is in plain sight. An examination is being conducted. That’s the protocol.

    1. Now there’s an interesting thought, or two.

      First, that the Director is a “he.” Appears to me that the ladies are finally in charge of the PTO.

      Second, that under the APA “he” has the discretion to effectively blacklist applications by arbitrarily imposing multiple rounds of prolonged surreptitious examination.

      Does “he” also have the power to solicit or receive cash compensation from individuals or companies to use “his” discretionary powers to coldcock the applications of their competitors? I mean, link SAWS to the equally spooky “Examiner’s Training Fund” and you’ve got yerself a real gestapo of a patent office.

      Lack of transparency encourages and justifies all sorts of unpleasant questions.

      Thanks, Dennis, for keeping this important topic hot.

      1. “arbitrarily imposing multiple rounds of prolonged surreptitious examination.”

        Nobody said that he arbitrarily imposed multiple rounds of prolonged surreptitious examination. That’s just you making wild accusations.

      2. The examiners training fund – and SAWS – and the Star Chamber of Reexamination – what a favor factory PTO has become. If only there were some structural way to protect the rights of the common man (and the objectivity of the examiner corps) from the ‘factions’ and ‘interests’ inherent in human nature.

        1. the rights of the common man

          The common man has zero interest in trying to patent all the “new methods” of using his/her smartphone that he/she “innovates” every day.

          The common man has zero interest in trying to shake down popular service-providing companies (e.g., companies who provide movies to users) based on some sentences he/she wrote in his/her home office.

          The common man has zero interest in trying to embarass the PTO by endlessly appealing meritless claims and creating legal sideshows.

          There are people who have an interest in doing such things. By and large they belong to the top 5%, 1% or 0.1% wealthies people in our society and by and large they are legally trained. There is very little that is “common” about them.

          1. Do you have data to back up your accusations?

            This type of continual implicit denigration of lawyers is simply preposterous. You need to get into a profession that you can believe in the work product you “produce” (i.e., not be anti-patent).

  24. And the operation of this program is different than the functioning of every OTHER aspect of Obama’s administration HOW? IRS: Targeting of people and political groups at the behest of the Administration and democratic legislators. Gina McCarthy at EPA using pseudonyms and off the books email addresses to hide illicit and illegal rule making and collusion with “environnmental organizations”. Illegal releases of data pertaining to farmers by EPA. Interior Department colluding to seize ranch lands. Justice Department’s asset forfeiture program. Abuse of “honest services” laws. Extortive tactics against corporations to defuse to defend their executives against vague accusations of politically motivated DAs. It all is the simple fact that this is an administration that has no regard for the rule of law. Saul Alinsky would be proud.

    1. I occassionally hear about people who get all of their “information” from Fox News, I rarely see them. It’s a precious thing when I do. I tip my hat to you, sir.

      /golfclap

      1. Well, I agree that Foxnews is one of the only organizations that actually reports on this kind of thing. Doesn’t make it less true.

        But, even the NYSlimes sometimes gets it right. See e.g. link to nytimes.com;
        “The Obama administration, which has a chilling zeal for investigating leaks and prosecuting leakers, has failed to offer a credible justification for secretly combing through the phone records of reporters and editors at The Associated Press in what looks like a fishing expedition for sources and an effort to frighten off whistle-blowers.”

        Strong words indeed. The NYTimes cares naught for the wrongly persecuted business man, but it does care about the fourth estate.

    2. “And the operation of this program is different than the functioning of every OTHER aspect of Obama’s administration HOW?”

      It predates the obama admin by a long shot brosef.

    3. RealitySetsIn

      When the sockpuppet picks a name like this you just that the comment is going to be a real winner.

      Remember when the patent maximalists were predicting that the delay in appointing a PTO director was going to bring down Obama’s presidency?

      I do. Fun times. Keep the hits coming, please.

        1. (also, the false spin should be noted, as no one ever stated that Obama’s presidency would be brought down by the delay in appointing a PTO director)

          Just par for the course for Malcolm.

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