The USPTO has now offered some public information regarding its secretive Sensitive Application Warning System with the apt acronym: SAWS. [LINK] SAWS came to light after it was ‘leaked’ by examiners and Devon Rolf has written about his experience with the program on IP Watchdog.
The basic idea is that examiners have been encouraged to flag applications that claim “highly controversial” or those that might create “unwanted media coverage.” Those applications are then tiered and then before allowance must be approved by either a technology center director or upper PTO management.
A major problem with the program of course is that none of the heightened reviews are made of-record. Thus, neither the applicants nor the public are told which applications are up for review or whether the review is following any semblance of legal process.
My position is that the USPTO is right to allocate more time and energy on applications whose claims are clearly very broad in a way that would significantly alter the marketplace. Of course, the review cannot be directed at avoiding USPTO embarrassment but rather to ensure that the issued patent complies with the law of patentability. Avoiding embarrassment will be a secondary benefit. As I mentioned above, the real problem here is the Office’s continued secrecy in this front. We do not know which applications have been chosen, why they were chosen, or whether the level of review follows the law. Because nothing is done on record, applicants likewise have no recourse regarding potential political capture of the examination process.
After the SAWS reports were leaked (and on my private suggestion) the office finally publicly admitted that the program exists and has provided some information regarding its progress.
[SAWS] is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency. {DC What are the other internal efforsts?} By bringing an additional quality assurance check to a very small number of pending patent applications, the USPTO helps ensure that those applications that could potentially be of special interest, are properly issued or properly denied. An application flagged for such a quality assurance check undergoes the same types of examination procedures as any other patent application, and is held to the same substantive patentability standards.
In terms of numbers, the USPTO also reported that only about 0.04% of applications fall into the program. This is only one application out of every 2,500 considered — the message here is “trust us – we’re just dealing with the oddballs.” Overall, it looks like about 1,000 applications have been part of this particular program.
I have requested that the USPTO provide a list of publicly-available applications that have been flagged for the SAWS program. Thus far, the USPTO has refused – claiming that the list of applications is privileged under exemption (b)(5) of FOIA. My position is that privilege is not applicable to protect this list – especially based upon the tradition and legal requirements that examination be done on the written record with proper notice. See 35 U.S.C s132 and 37 C.F.R. s1.104.
link to ipwatchdog.com
“With respect to those who spoke about software and the abstract idea exception there was near unanimous agreement that more examples are required because in practice it is virtually impossible to figure out whether a claim covers an abstract idea under the current guidance. ”
The question arises: are these people stone ignorant or just blatant liars? Or a little of both?
Putting the irony aside for the moment, let’s look at Malcolm’s “critique,” or rather, whom that comment on Mr. Quinn’s blog appears to be in reference to:
Hans Sauer – Deputy General Counsel Biotechnology Industry Organization
Bob Stoll – Partner, DrinkerBiddle, Former Commissioner for Patents
Jim Crowne – Deputy Executive Director for Legal Affairs, American Intellectual Property Law Association
Micky Minhas – Associate General Counsel Microsoft Corporation
Um, Malcolm any one of these in particular that you wish to “tar?”
Malcolm any one of these in particular that you wish to “tar?”
To the extent these people fall into the class of so-called “experts” who find it “impossible to determine” “in practice” whether a software claim covers an abstract idea (as was reported), they all deserve to be “tarred.”
We have numerous examples from the courts that make that task very easy in many commonplace instances (well, they were commonplace anyway). Pretending to be confused about, e.g., the eligibility of a claim reciting “A computer, wherein said computer is configured to output an sewer repair employment contract in response to a user request” is irresponsible, to say the very least.
Um, Malcolm any one of these in particular that you wish to “tar?”
Arguments to authority aside, when the claim and the spec say “We want to achieve this, and we are explicitly not limiting the manner in which this is achieved” you don’t need more guidance to understand its a claim on an idea of “doing this”. In fact, you didn’t even need to understand the concept of abstract ideas, you just needed to understand the concept of “precedent” and the strict analogy to Morse. “Rawr, non-limited claims to end results bad.” So if what you’re saying is that none of the above understand the concept of legal precedence then yes, they should not be practicing. They should take heart though, because in fairness the CAFC isn’t far behind them.
I think these people are confusing the fact that they want something they can’t have with the lack of clarity on achievement. I bet all of those people would ask for more examples of how to patent an obvious invention as well. They’re not bad thinkers, just good advocates.
Random, I am not sure most practitioners have ever read Morse, or for that matter, Hotel Security. What they have read is Benson, which is not a shining example of clarity because of its closing statement regarding preemption. Had Benson simply followed the outline of Hotel Security, the history of 101 jurisprudence in the last 40+ years would have not been so difficult.
Prometheus/Alice represent a return to Hotel Security without acknowledging its guidance. In truth, Steven wanted to follow Hotel Security in Bilski. His colleague, Breyer, wrote Prometheus. And, it appears, Stevens and Hotel Security have emerged victorious, even though the Court will never acknowledge this.
Practitioners wanted to understand, really understand Alice and Benson need only to read Hotel Security.
Really understand what, Ned?
That 3, the new 4, is not 5?
That – as even Prof. Crouch directly told you – that Hotel Security is NOT controlling law and does NOT have the authority you continue nonetheless to present that it does?
You do know that Random is especially challenged and that your feeding him this claptrap will not help him, right?
While I consider the term “abstract idea” unfortunate, despite the rude way MM makes the point, he is correct that the court decisions on the issue is quite clear. The judiciary will not allow a patent applicant to stake out a claim that covers purely analytic or purely a priori knowledge.
Kant discusses the concepts in detail in Prolegomena to Any Future Metaphysics That Will Be Able to Present Itself as a Science (1783).
Examiners and prosecutors dealing with software systems should probably have some understanding of Lambda Calculus. An elementary introduction can be found at the following link.
link to ftp.cs.ru.nl
Because MM considers those that have problems with the abstract idea exception to be ignorant or liars, I invite him to take a look at Backes ‘137 (Transparent load sharing for parallel networks).
link to google.com
Both independent claims are directed to an extension of the Spanning Tree Algorithm. Both the Spanning Tree Algorithm and this extension are purely abstract mathematical ideas from Graph Theory. Why was Wellington Chin correct to allow the claims? (I have to qualify that I would have made the prosecution lawyer fix the grammar of the claims.) Why are there two independent claims?
Metaphysics…
Physics…
Philosophy…
Math…
Applied math…
MathS… (See Tegmark)
Finally, software is NOT something TOTALLY in the mind. Software is DEFINED to be a machine component, a manufacture in its own right. Software is equivalent to hardware and equivalent to firmware.
These are fundamentals.
The issues associated with 101 are epistemological and not technological. We expect examiners, who make technological judgments with respect to 102, 103, and 112, to have a reasonable understanding of technology. Examiners making epistemological judgments with respect to 101 should have a reasonable understanding of epistemology.
I am not asking for much. I am not arguing that examiners should know Kant’s Critique of Pure Reason backwards and forwards. I read Kant’s Prolegomena to Any Future Metaphysics That Will Be Able to Present Itself as a Science in my junior year at prep school.
Software can be a component of a well-defined technological system (as the court held in Diamond v Diehr), but in some cases it clearly is not (as the court held in Gottschalk v Benson).
Until recently examiners have had no problems with the extensive software found in packet switching and RAID devices.
Lately I have been seeing a change in the above treatment of software as a component at the same time as I see examiners grant stuff like the following January 2015 patent entitled “A Generalized Policy Server”.
link to patft.uspto.gov
Here is the first claim formatted to facilitate comprehension.
link to drive.google.com
Note how badly the claim is structured grammatically.
It is missing an “and” after “network;”.
There are three nominative absolutes scattered through the claim. I admit that it is a prejudice, but nominative absolutes (like ablative absolutes in Latin and genitive absolutes in Classical Greek) are inherently ambiguous and indefinite.
And look at all the dangling “wherein” clauses. I think these are added to confuse examiners with a poor grasp of English. “Wherein” is a relative adverb that means “in which” and that should be placed in some reasonable proximity to the antecedent, which in this case is probably “A method for controlling access to network information”. My sixth grade English teacher would have bewailed “dangling modifiers”.
Most examiners will probably follow the suggestion from MPEP 2111 and ignore the “wherein” clauses.
2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-08.2012]
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002) (finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id.
So if we eliminate the “wherein” clauses, is this claim directed to anything that requires a computer and software?
If the SAWS program were really focused on patent quality, wouldn’t it be concentrating on making sure that claims like this one never appear in allowed patents
a) instead of making it hard for Alzheimer’s treatments to reach the public or
b) instead of trying to guarantee that the next Microsoft or Cisco is not a US corporation?
I will give your comment some more thought, but you should be aware that your view of Benson is explicitly wrong. Read again the decision, and look for the phrase “we do not so hold.”
Here is the paragraph in question from Gottschalk v Benson.
link to caselaw.lp.findlaw.com
The court points out that there might exist patent-eligible methods that do not meet the machine or transformation rule. So?
The method described in claim 8 or claim 13 is hardly more than pseudo-code for a subroutine that receives a BCD encoded number as some form of unspecified input and that converts the BCD representation to binary with unspecified form of output.
The input is in a machine register and the output is in a machine register.
The method is nothing more than a verbal expression of a pure algorithm completely implemented on an unspecified digital computer and confined thereto. One might as well patent a subroutine (or the associated pseudocode) to calculate a Fibonacci number or a subroutine to compute the square root of number.
In contrast, Claim 1 of Backes ‘137 describes a method
(1) that is a network protocol application of a pure algorithm and
(2) that changes how packets traverse a network.
It is easy to see why the method claims of Benson are patent-ineligible while the method claims of Backes ‘137 are without question patent-eligible.
“and confined thereto” is your (and the Court’s) logical failing.
Joachim, One today often sees the novelty of a claim being expressed in wherein clauses. Our Euro allies particularly like to use “wherein” as a linguistic substitute for “characterizing,” where the old elements are defined earlier and the new portion come after.
So, in the example claim, the steps requiring action, e.g., “storing a local copy,” are old and conventional. The wherein clauses contain the novelty.
Unscrambling the claim, with this view, it appears that the claim is to software that encrypts a message with certain information upon meeting certain criteria. Thus, everything in the claim is old but the criteria and the information encrypted.
Ned,
Are you seriously trying to make a Jepson claim parallel here?
You still cannot help yourself on 101 matters, can you?
(psssst – Benson still states “we do not so hold”)
Which Euro allies are using non-standard Engish?
[Please check out the Merriam-Webster definition of “wherein”.
link to merriam-webster.com ]
In German “worin” == “wherein” is the normal inanimate relative. In Spanish “en donde” simply does not mean “such that” or “so that”, which I think are the meanings proposed for “wherein” in the first claim of the Generalized Policy Server patent (Hannel ‘311).
link to patft.uspto.gov
I suppose one might get away with such bad English in a court whose judge tolerates linguistic atrocity, which is not even Patentese, but I would be loathe to assist in an infringement case in which I had to justify a charge of infringement before a judge that was a stickler for grammar.
I will try to sort out what the claim should be, but let’s take a look at the Abstract and especially at the italicized text in the Abstract. [Note that only the emboldened sentence is correct English/Patentese.]
“A scalable access filter that is used together with others like it in a virtual private network to control access by users at clients in the network to information resources provided by servers in the network. Each access filter use a local copy of an access control database to determine whether an access request made by a user. Changes made by administrators in the local copies are propagated to all of the other local copies. Each user belongs to one or more user groups and each information resource belongs to one or more information sets. Access is permitted or denied according to of access policies which define access in terms of the user groups and information sets.”
Here is what I believe to be meant.
A scalable access filter is used together with others like it in a virtual private network to control network client user access to information resources provided by network servers. Each access filter uses a local copy of an access control database to determine whether an access request has been made by a user. Changes made by administrators in the local copies are propagated to all of the other local copies. Each user belongs to one or more user groups, and each information resource belongs to one or more information sets. Access is permitted or denied according to access policies, which define access in terms of the user groups and information sets.
If the USPTO is really trying to improve patent quality, the first step would consist of creating an MPEP entry that describes “Elements of Patent Style. The second step would consist of creating a formal system of grammar and punctuation review for allowed patents.
The SAWS star chamber that thwarts normal patent examination has no connection whatsoever with patent quality.
Joachim, your overt focus on “proper” grammar reminds me of the following lesson that language is itself just a man-made fabrication and tool.
There are two versions. First, focusing strictly on recognizing and processing each word with just letters skewed:
if yuo can raed tihs, you hvae a sgtrane mnid, too.
Can you raed tihs?
i cdnuolt blveiee taht I cluod aulaclty uesdnatnrd waht I was rdanieg. The phaonmneal pweor of the hmuan mnid, aoccdrnig to a rscheearch at Cmabrigde Uinervtisy, it dseno’t mtaetr in waht oerdr the ltteres in a wrod are, the olny iproamtnt tihng is taht the frsit and lsat ltteer be in the rghit pclae. The rset can be a taotl mses and you can sitll raed it whotuit a pboerlm. Tihs is bcuseae the huamn mnid deos not raed ervey lteter by istlef, but the wrod as a wlohe. Azanmig huh? yaeh and I awlyas tghuhot slpeling was ipmorantt!
Version two (with numbers thrown in):
F1gur471v3ly 5p34k1ng?
7H15 M3554G3
53RV35 7O PR0V3
H0W 0UR M1ND5 C4N
D0 4M4Z1NG 7H1NG5!
1MPR3551V3 7H1NG5!
17 WA5 H4RD BU7
N0W, 0N 7H15 LIN3
Y0UR M1ND 1S
R34D1NG 17
4U70M471C4LLY
W17H 0U7 3V3N
7H1NK1NG 4B0U7 17,
B3 PROUD! 0NLY
C3R741N P30PL3 C4N
R3AD 7H15.
(and then the obligatory)
PL3453 F0RW4RD 1F
U C4N R34D 7H15.
The mind also handles sentences and paragraphs that are “less than perfect.” While one can desire the legal documents to have had better care in their construction, certain errors just do not rise to the level that you appear to be particular about.
anon, loved your post.
To me, it was like reading middle English.
Canterbury Tales: link to youtube.com
Jo, I like your idea of requiring readable patents with acceptable grammar, and clearly written claims. Perhaps grammar guidelines could be proclaimed, and every prospective patent agent and attorney be required to pass a written grammar test prior to being anointed.
But as to practicing agents, an examiner could flag poorly written specifications/claims to a special grammar guru, who could be empowered require the responsible practitioner(s) to take and pass the grammar test as a condition of continued practice.
I am not so sure that one could reject a claim for bad grammar.
Or could one?
I have certainly seen non-final rejections for bad punctuation, and bad grammar often creates indefiniteness.
Joachim,
You are a man with a hammer, looking for nails.
To wit, your statement of “The issues associated with 101 are epistemological and not technological. simply is not true.
You are letting your own experience and knowledge base usurp the proper perspective of the law.
Why do you think I listed the words that I did at 29.2.1?
Think about it.
As to “I am not asking for much.“, it may in fact not be much, but nonetheless, you ask for the wrong thing.
Joachim,
You have the goldilocks syndrome going on here.
You have yet to find the sweet spot of the baby bear.
You have the papa bear of “too hard” – missing the boat by swerving too hard into philosophy;
You have the mama bear of “too soft” – missing the boat by swerving into the too fine details of ‘perfect’ grammar.
One more try – if you are able to recognize and adapt to the weaknesses pointed out – should do the trick.
J Martillo: Because MM considers those that have problems with the abstract idea exception to be ignorant or liars,
Good grief! First of all, that’s not even close to what I actually wrote. Second of all, it’s not my position.
It’s entirely possible to have an intelligent, coherent, reasonably defensible view that there are “problems” with some aspect of the so-called “abstract idea” exception. But that’s entirely different from taking the unreasonable and indefensible position that “it’s impossible to determine when a claim protects an abstract idea” or the position that “if my favorite claim is abstract than everything is abstract” or (my personal favorite”) “obviousness can take care of all these problematic claims.”
Why was Wellington Chin correct to allow the claims?
Who said that he was correct?
I do find it amusing that the improvement over the prior art here is supposed to be “preserving the time sequence” of distributed messages. The method of claim 1 achieves that goal in a truly magical manner: you “execute a scheme” which “causes” the time sequence to be preserved. It’s just like rocket science, except you don’t need to do any science and you never need to describe your new rocket. You just state that somebody “executes a scheme” that “causes” the new rocket to fly faster and more accurately and voila! instant patent because, hey, who doesn’t want a faster, more accurate rocket?
Returning to my original point, JM, I’m not denying that there are always going to be cases on the margins of any rule that are more difficult to analyze compared to others. The existence of such cases doesn’t nullify that rule or render the rule incomprehensible. Equally unpersuasive on that front is the existence of a group of deeply conflicted, directly interested, self-described “experts” endlessly proclaiming their “confusion” while failing (apparently) to understand the core concerns leading to the development of the rule.
ipse dicat — How should I have interpreted the following.
“With respect to those who spoke about software and the abstract idea exception there was near unanimous agreement that more examples are required because in practice it is virtually impossible to figure out whether a claim covers an abstract idea under the current guidance. ”
The question arises: are these people stone ignorant or just blatant liars? Or a little of both?
Anyway MM asks:
Who said that [Wellington Chin] was correct?
He was, and it should be clear to anyone that understands Diamond v Diehr.
I understand that MM probably has not read the patent and its claims closely.
“[P]reserv[ing] the time sequence of messages” was not the improvement over the prior art. At the time period [1988-1990] the problem of time sequence was an issue of contention between advocates of Spanning Tree based bridges and Source Routing based bridges.
Because the Spanning Tree algorithm removed the redundant links/ports in the graph onto which the network topology could be mapped, a MAC layer network, which used Spanning Tree based bridges, preserved frame sequence from the source end host to the destination end host — something that was not always guaranteed in Source Routing systems.
Backes and his fellow inventors were focused on making an important improvement to Spanning Tree based systems as the title of the patent discloses: Transparent load sharing for parallel networks.
The inventors explain the problem in the Background.
The spanning tree algorithm in this form, however, creates an additional problem. If messages are forwarded on only one of the trunked networks, congestion may result.
The inventors point out that procedures other than theirs do not preserve time sequence.
The “binding scheme” is fully detailed in the text and diagrams, and there is more than enough info in the written specification to enable a PHOSITA like me to implement the invention. [Note that the claims do not have to repeat the specification.]
While the independent claims are directed to the Spanning Tree Algorithm, they in fact claim
[1] an extension to the Spanning Tree Protocol (really a procedure that deterministically extends the possible behaviors of a bridging device in response to explicitly defined configuration data and to explicitly defined data exchanged among the bridges of the MAC layer network) and
[2] the device on which this software extension has been implemented.
The courts have generally not had problems with security, signaling, terminal concentration, and networking protocols because they are inherently limited to device interactions and cannot be considered abstract ideas in the judicial sense or analytic knowledge in the Kantian sense.
As with Diehr ‘143, the Backes ‘137 represents a genuine non-obvious improvement and innovation over prior art.
There is nothing at all borderline about the allowability of the claims in Backes ‘137 (as anyone that understands Diamond v Diehr should realize), and I have found nothing at all confusing about the case law on 101 although I consider some of the terminology badly chosen.
The real problems with 101 analysis are the following.
1. Some of the USPTO guidance seems misleading.
2. Americans don’t receive the basic pre-college philosophy training that is not uncommon in European educational systems.
I love the conspiracy threads running through this post, as if every rejection you got was part of a super secret program designed specifically to screw you. The office has been allowing 75-85% of its applications for years, kids. If we’re running a secret “reject everything” program we must be pretty bad at it. Examiners just love searching, mapping out 30 pages of rejections, and engaging in legal writing against attorneys when they have no legal background rather than doing the 2hr paperwork on allowances, right?
I assure you the actuality is that the problem runs in the opposite direction.
To those of you who complain about the secrecy qua secrecy – you guys I actually get. You might want to consider though that, as Dennis reported, only about 0.04% of applications fall into the program. You probably know when the application falls in, because you know from experience that your application deviates so far from the regular (or perhaps you don’t know, for exactly the same reason). That’s not a substitute for the office actually explaining (though I’m not sure they should be required to, legitimate as your desire to know is).
If you had a client who got “75-85%” of allowed applications, and then one day one of their applications fell into the SAWS program – the program that no one knew about until recently? Have you ever faced this situation on trying to explain this to a client why nothing seemed to work to overcome the never-ending rejections, even after multiple RCEs, multiple amendments, multiple interviews, and then, just nothing going in the right direction. What do you think happens to the reputation of a competent patent attorney when the prosecution costs goes through the roof? SAWS is scary because it can damage the reputation of anyone competent, only because someone high in the USPTO is politically driven never to allow the application. I hope someday one of your applications lands in this program and then you will be crying “conspiracy” more than the rest of us.
randomchaotic Have you ever faced this situation on trying to explain this to a client
Like every patent attorney who’s practiced for any length of time, I’ve explained all kinds of unfortunate stuff to clients.
But there is nothing easier to “explain” to clients than legal or administrative decisions that were beyond my control or the control of my law firm. Responsible attorneys explain the possibility of those events (which are inevitable in patent law) to clients up front, before they take their money. It’s a great way to avoid malpractice — you should practice it far more often if it seems difficult to you. That’s especially true if you are prosecuting on behalf of some client who believes he/she is entitled to dominate an entire industry, and triply true if tht belief is based on some allegedly non-obvious “innovation” that was secretly filed on 25 years ago.
What do you think happens to the reputation of a competent patent attorney when the prosecution costs goes through the roof?
Again, if the attorney is doing his/her job, nothing at all happens to the attorney’s reputation because the client has been forewarned about the possibility of increased costs with every decision that is made.
SAWS is scary because it can damage the reputation of anyone competent,
Complete horsehockey. Once again: we’re talking about an internal process to ensure that claims with the most industry-damaging potential are examined with the utmost care. It affects a microscopic number of patent applications.
Besides, the day that the typical patent prosecutor starts worrying about their “reputations” before they take money from clients and put arguments on the public record that would offend the decency of most people is the day I eat my entire collection of hats.
I hope someday one of your applications lands in this program and then you will be crying “conspiracy”
News flash: not everybody thinks like you. Most reasonable people don’t leap to conspiracy theories whenever their interests are threatened. It is, unfortunately, a bad habit of a certain class of patent prosecutors who regularly comment on blogs here and elsewhere.
If you had a client who got “75-85%” of allowed applications, and then one day one of their applications fell into the SAWS program
I doubt anybody who files enough patents to have a solid 75-85% number wouldn’t file an application that would trigger SAWS. But let’s assume that happens…
Have you ever faced this situation on trying to explain this to a client why nothing seemed to work to overcome the never-ending rejections, even after multiple RCEs, multiple amendments, multiple interviews, and then, just nothing going in the right direction.
Worse – I’ve tried to explain to a lawyer why nothing they will do will cause an allowance.
It’s this logic that a certain amount of “try hard”ness should always result in a patent that gets examiners upset. No amount of work will put words in the spec that weren’t there before, and sometimes there’s just nothing patentable there. If 75-85% of patents issue, that doesn’t mean the other 15-25% are all a conspiracy to keep your guy from having a patent. It’s not a registration system.
SAWS is scary because it can damage the reputation of anyone competent, only because someone high in the USPTO is politically driven never to allow the application.
You’re acting as if SAWS is an inherent failure of the application. It is not – an application is always subject to the statutory standards. Let’s take one of the items listed on the linked sheet: A perpetual motion machine. If you submit claims on a perpetual motion machine, you probably shouldn’t be surprised when it is continually rejected no matter how much work, interviews, RCEs or client money you throw at it. Nor should you incorrectly attribute the failure of the claims to the fact that they might or might not be in any particular quality control program. The damage to the lawyer’s reputation comes in when they filed the application (as it shows they probably shouldn’t be in this business), not when the ridiculous application failed to be allowed.
I hope someday one of your applications lands in this program and then you will be crying “conspiracy” more than the rest of us.
If an examiner doesn’t like your application, they don’t need to flag it to engage a convoluted multi-group conspiracy to twirl their mustaches and keep it from issuing. They pretty much just reject it on their own, something which happens at a far higher rate than .04%. There’s no need for a secretive rube goldberg rejection machine, so you probably shouldn’t assume that it what SAWS is.
RG: Let’s take one of the items listed on the linked sheet: A perpetual motion machine. If you submit claims on a perpetual motion machine, you probably shouldn’t be surprised when it is continually rejected no matter how much work, interviews, RCEs or client money you throw at it. Nor should you incorrectly attribute the failure of the claims to the fact that they might or might not be in any particular quality control program.
But the end result of this is that US is going to lag behind the rest of the world in the development of perpetual motion machines! The same is true for math knowledge pills and instant hangover cures.
Why do so many people here hate innovation? It’s like some kind of conspiracy to ruin the country.
“[SAWS] is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency. ”
So we’re back to quality = reject reject reject?
How regressive.
and when can we get some sua sponte review of the horrible obviousness rejections coming out of the PTO?
bja So we’re back to quality = reject reject reject?
Sounds like the PTO is just starting to regain its sanity and attempt to extract itself from the grimy clutches of its patent-worshipping captors.
Try to keep the hysteria under control. Rather than giving 1 in every 20 or applications a serious once-over before grant (which is what it should be doing, at a minimum), the agency is taking special care with 1 in 2500 applications. That’s a microdroplet in a very big bucket.
The odds that your applications would be affected by this are very, very close to zero.
On the other hand, if you want to share some claims that you are prosecuting with the blog, I’m happy to discuss their validity and/or eligibility with you. That would be helpful for everybody. Free of charge.
Enough Malcolm malarkey already.
Malcolm, you do realize that the number of applications affected has ZERO to do with any question of legality/illegality, right?
“if you want to share some claims that you are prosecuting”
Why don’t you follow your own advice and share your claims? After all, aren’t they a model or how things “should be” done? Why the reticence?
“starting to regain its sanity and attempt to extract itself from the grimy clutches…”
What was that phrase? Oh yeah: “You don’t sound dispassionate at all, to me.”
Further, you have some serious readjustments to make if you think this type of Star Chamber (yes, per Joachim’s explanation) tactic is an acceptable manner of achieving ANYTHING.
The ends do not justify the means.
Ever.
What was that phrase? Oh yeah: “You don’t sound dispassionate at all, to me.”
I never claimed to be “dispassionate.”
Keep beating that straw.
Star Chamber
LOLOLOL
“anon” the number of applications affected has ZERO to do with any question of legality/illegality
I haven’t seen any convincing evidence of any “illegality.”
And the number of applications “affected” is certainly relevant to the hysterical “star chamber” rhetoric which I am questioning (to the extent I’m not laughing outright). That’s because the number of applications “affected” is not only incredibly tiny compared to the number of pending applications which are not “affected” (but which should never be granted) but it’s also incredibly tiny compared to the impact that the allegedly “affected” claims will have on the public if they are improvidently granted.
This is just an administrative agency doing to the job that the public created the administrative agency to perform. It’s no surprise that the same folks whose heads explodes every time their precious patent “rights” are negatively impacted are desperate to turn increased diligency by the PTO into some kind of a “scandal.”
It’s what you guys do for a living, after all. It’s what you’ve always done. But go ahead and tell everyone again how much you value “quality examination”. That’s always good for a laugh.
“I haven’t seen any convincing” – a segue that indicates what you say next is completely meaningless, as what you see and your version of convincing simply carries no weight.
Number of applications affected – ARE irrelevant. Period. No if’s ands or buts – you simply do not get to ignore the means to achieve ANY ends.
BTW, the USPTO site does have a graph indicating the number pulled: since 4/30/2010, approximately 26,000 applications have been pulled – and are still pending – the graphic does not indicate how many additional were pulled and are not still pending.
Your “just doing its job” FAILS to account for the secrecy and YES – Star Chamber tactics. Joachim properly set out for you the definition and all you have done is attempt to “laugh it away.”
It’s not going away. And yes – it is a scandal, no matter how deep you want to bury your head.
(as for the ‘make-you-laugh’ desire for better examination, again – oddly – Joachim correctly points out that this Star Chamber C R P has nothing to do with BETTER examination)
It’s not going away. And yes – it is a scandal,
Remember when the PTO director confirmation “scandal” was going to damage Obama’s presidency?
That was pretty funny.
Gosh, I’m getting sleepy just thinking about this “scandal”. It’s so sordid … like a star … chamb…
[insert deep snoring sound]
For years I have wondered whether there was a remedy to examiner misbehavior or incompetence. As far as I can tell the examiners really have no downside in abusive prosecutions.
No one has ever tried a Bivens action against an examiner, and successful Bivens action results have only occurred with respect to the 4th, 5th, and 8th amendments.
Yet especially in the case of SAWS, where there seems to be explicit disregard of SCOTUS’ rulings and where clear Congressional decisions seem to be ignored, I wonder if SCOTUS might be willing to broaden the applicability of Bivens.
Constitutional Torts – Bivens Actions
The Supreme Court created a private damages action against federal officials for constitutional torts (civil rights violations), which are not covered by the FTCA. In Bivens v. Six Unknown Named Agents of Fed. Bureau of Narcotics, 403 U.S. 388 (1971), the Court held that the Fourth Amendment gives rise to a right of action against federal law enforcement officials for damages from an unlawful search and seizure. Since a Bivens action is brought against a federal official in the official’s personal capacity, it is not considered to be an action against the United States and therefore is not barred by sovereign immunity. Bivens is not a general tort law. The plaintiff seeking a damages remedy under Bivens must first demonstrate that constitutional rights have been violated.[Davis v. Passman, 442 U.S. 228 (1979) ]
Bivens suits have been acknowledged by the Court as having more of a deterrence effect against federal officials from committing constitutional torts than the FTCA. This is chiefly because a Bivens suit is a personal suit against the official, and punitive damages are recoverable. The government is substituted for the defendant in FTCA cases, and the FTCA does not allow punitive damages. Thus a Bivens defendant is at risk of personal liability, including punitive damages, while the government pays all damages in FTCA cases. Procedurally, a plaintiff is entitled to a jury trial in a Bivens action, but not in a FTCA case.[Carlson v. Green, 446 U.S. 14 (1980) ]
The main defense for a federal official in a Bivens action is official immunity from actions for damages. There are two types of official immunity available as affirmative defenses: absolute and qualified.[ Butz v. Economou, 438 U.S. 478 (1978)] Absolute immunity is granted to judges, prosecutors, legislators, and the President, so long as they are acting within the scope of their duties. Qualified immunity applies to federal officials and agents who perform discretionary functions, but may be overcome by a showing that their conduct violated a constitutional right.[Harlow v. Fitzgerald, 457 U.S. 800 (1982) ]
Jo, but what if the patent applicant has a remedy by simply appealing, petitioning the Director if necessory and/or filing suit by right under 35 USC 134/145.
What I see here are supine patent attorneys who are not used to standing up for their rights.
It seems necessary to file an appeal under 35 USC 145 before undertaking a Bivens Action.
Unfortunately, the appellant receives no compensation for torts from denial of Constitutional rights. See below.
The Bivens Action might make it possible to recover expense and losses from the examiner, the examiner’s supervisor, and anyone else involved in the denial of Constitutional Rights.
35 U.S.C. 145 Civil action to obtain patent.
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A).)
Good point.
The statute seems to assume an honest difference of opinion between the Office and the applicant, not an abuse of process by some examiners.
An honest difference of opinion would not be a denial of Constitutional Rights while USPTO procedures should catch gross incompetence.
Maybe the possibility of Bivens or similar action explains the reluctance to disclose whether a patent has been consigned to SAWS. Such assignment might provide prima facie evidence of abuse of process.
Hahahaha. This is hilarious.
I feel pretty confident that this will never happen. Let’s remember the facts that set up the case in Bivens:
“The agents manacled petitioner in front of his wife and children, and threatened to arrest the entire family. They searched the apartment from stem to stern. Thereafter, petitioner was taken to the federal courthouse in Brooklyn, where he was interrogated, booked, and subjected to a visual strip search.”
That is nothing like the situation here.
That is nothing like the situation here.
Don’t forget : you’re debating people who are on the record equating the PTO with “the Gestapo” and patent reformers as “jihadist” rapers and killers.
They can’t tell the difference.
ASHCROFT v. IQBAL (No. 07-1015) tells us that the violation suffered by the plaintiff does not seem to be the controlling issue in the complaint. Rather the plaintiff needs to show the clear intent of the federal official(s) to violate federal laws or regulations.
link to law.cornell.edu
What is the point of a face-to-face meeting with an examiner when the examiner will reject the patent application under SAWS despite anything said in the face to face meeting and even if he agrees with the arguments made by the applicant?
Such a face to face meeting is a complete waste of time. Yet the applicant is not informed that the patent application has been put into a SAWS category, and until recently the USPTO has concealed the existence of SAWS.
Claiming that SAWS only affects a few applications is not a reasonable defense.
That argument could justify bringing back racial discrimination. After all only a minority of US citizens would be affected.
“Claiming that SAWS only affects a few applications is not a reasonable defense.”
This has been pointed out several times now.
Apparently Malcolm cannot tell the difference…
Must be that preference for drive-by monologue instead of actual dialogue thing he has going on.
Open questions to the examiners reading the blog:
What would happen to you if you refused to follow this program? If you simply went ahead and examined under the law and disregarded unpublished “secret” directives?
Would there be a cause for disciplinary action? Would POPA back you up?
What happens to your docket for such items so reported to SAWS? Are allowances made for the increased presences?
An open question for all Office personal: the SAWS link states that this is only one of many such internal programs. How many other programs are there? How many have you been threatened not to disclose? Do any programs involve more than mere “informing,”
How much don’t we know?
What would happen to you if you refused to follow this program? If you simply went ahead and examined under the law and disregarded unpublished “secret” directives?
Nothing.
All our examinations are under the law. You don’t know what you’re talking about.
Remember when we discussed Examiner’s pay and count requirements. I told you that proper examination of a patent requires far more money, time and resources than we are given, and your response was I should do my job? I told you in response that if the PTO decided to “do its job” under your definition you would hate it.
Would there be a cause for disciplinary action? Would POPA back you up?
No, and they wouldn’t have to. The vast majority of Examiners cannot sign off on actions themselves, so why would there even be an issue? The remaining examiners can sign off, pursuant to the fact that signatory power has always originally vested only in the directors. This isn’t a flat communism, it’s a tiered hierarchy. Your boss can always walk into the room and tell you they think you should do something different, that’s what makes them your boss.
What happens to your docket for such items so reported to SAWS? Are allowances made for the increased presences?
Nothing, and not inherently, but allowances can always be made. I can get my SPE to freeze a timer if someone doesn’t call me back the same day if I push hard enough. Again, you’re confusing departing from regular order (something uncommonly done) with violation of some rule.
Let’s assume I get a gut feeling that something isn’t allowable. There’s no rule preventing me (in fact I’m always encouraged) to seek help from other examiners, or from weekly meetings of rooms of examiners, or to take two weeks and bury myself in one of our several libraries because I’ve convinced myself something is there. Will I routinely do that? Of course not, because my employment (and every normal person’s expectation) is based upon the best examination I can do in a given timeframe, with an understanding that we’ve got hundreds of thousands to do in a year – not a perfect examination. Does that mean I never have a gut feeling that causes someone to get a more perfect examination? Nope, and there’s nothing wrong with that either. Is it that you think we use the library for every application, or that we have a library for show that never gets used?
Is there a qualitative difference between one examiner getting stuck on a rejection versus him taking it to a room and crowdsourcing a response? Probably, but the people who should be complaining are the ones who don’t get crowdsourcing.
But please – look my allowance rate is a statistical deviation from the mean, which means someone who draws me has a less likely chance of getting an allowance than other people based on random chance. A handful of good examiners makes a larger difference in allowances than the entire SAWS program. You’re really making too much of this.
An open question for all Office personal: the SAWS link states that this is only one of many such internal programs. How many other programs are there?
SAWS is a quality control program. We probably have a dozen.
How many have you been threatened not to disclose?
Hahaha. Well the first two rules of our stonemason’s cabal is we don’t talk about fight club.
How much don’t [I] know?
Must…resist…softball….
Thank you for your opinions RandomGuy.
Other thoughts from our erstwhile examiner contingent?
In my experience (and TC), SAWS cases didn’t necessarily have any differences in prosecution at all. That is, when you saw a case that might show up in the Washington Post, you sent a memo up the chain when you were ready to allow it (or sometimes reject it if the rejection might be a big deal). None of the SAWS cases I remember were delayed more than a week or two, if that. As several people have already pointed out, a more significant issue is the random selection of Examiner, since some Examiners may be faster/spend more time/search better/write better/overall examine better than others, and those large differences will manifest in very different outcomes. The Examiner A who finds the 102 reference that Examiner B would have missed may never allow your case because she has better prior art from the start. Or maybe Examiner A is smart enough to write a 103 over your broad claim while Examiner B shoehorns a rejection of the same claim in a divisional into a “broadest unreasonable interpretation” 102 rejection which is reversed by the PTAB while the 103 is affirmed. These differences swamp out any of the quality programs.
Thanks Another randomguy.
Any other examiner opinions?
You guys seem awfully quiet…
Interesting
Thanks Another randomguy.
Any other examiner opinions?
You guys seem awfully quiet…
The problem is the secrecy. It seems almost ridiculous that this statement would now apply to the USPTO: History tells us that when governments keep secrets, more often than not, something nefarious is afoot.
Since absolutely nothing would seemed to be gained by keeping this program a secret – especially from the applicant whose application is flagged – why then is it secret? In fact, if it is nothing more than what the USPTO now says it is, why wouldn’t they instead advertise that they have taken special steps to ensure the quality of patents they issue? Sounds to me more like a bureaucracy worried about avoiding embarrassment than assuring quality. I.e., no more “Tarzan swinging” patents. link to google.com
Claims all cancelled on reexamination.
Yes, the USPTO was apparently so embarrassed by this patent, one with absolutely no commercial value and zero possible impact on any form of commerce, that the Commissioner felt it necessary to institute a rexxam on his own. An excellent use of USPTO resources.
An excellent use of USPTO resources
But the barrel scraper who filed and prosecute the application wasn’t wasting anybody’s time.
At least nobody ever tried to claim a method of managing a bingo game “on a computer”, or managing a line for going to the bathroom on a plane, or managing a list of movies to rent, or something inane like that.
Wow, you were serious. From 6329919:
A method of providing reservations for restroom use, comprising:
receiving a reservation request from a user; and
notifying the user when the restroom is available for his or her use.
WOW. Seriously wow.
“But the barrel scraper who filed and prosecute the application…”
I don’t think you can call that person a barrel scraper. Naive about consequences, perhaps. It was a teaching exercise for children, not an attempt to exclude use of the method claimed.
(Disclaimer – I do not nor ever have worked in Minnesota, or for any company using that state in its name.)
But, I agree the secrecy is the problem. Blindingly obvious that no government agency should have secret programs like this.
The problem is the secrecy.
Right. Let’s begin with the easy stuff: require all patent applications to be published within six months of filing; require all phone calls between applicants and the office related to patent validity, ownership or term to be recorded for quality assurance purposes; and require the controlling interest in all patent applications to be made public record prior to examination of the application.
Of course, this assumes you really care about “secrecy” and not just the ease with which you obtain a patent grant.
Likewise the complete transcripts of all meetings between the PTO and its “shareholders” should be made available.
The complete text of all Office Actions and responses should be searchable in the PTO database and the results of those searches should be filterable by both entity, inventor and/or (1) the real controlling interest at the time of statement was made and (2) all controlling interests throughout the history of the application family.
Then we’ll see whose “playing games”, won’t we?
C’mon, let’s hear it for “transparency”!
The easy stuff would be the PTO providing its list of SAWS applications.
That would take them, I imagine, about 5 minutes. Certainly easier than changing entire PTO procedures.
That said, I’m all for your suggestions! More information is better than less information. Get on it friend!
The easy stuff would be the PTO providing its list of SAWS applications
It’s all easy to do.
I don’t have a problem at all with the PTO releasing the list of applications it has identified as “sensitive.”
But if you think that the typical prosecutor here who is getting his/her undies in a bundle over this fake “scandal” (fact: most prosecutors could care less, for good reason) is open to the suggestions I’ve put forth, you’re absolutely wrong. Their hypocricy is boundless. Let me know if you need specific examples. They are easy to find.
Your aim – not in expectantly – is way off as to what the type of secrecy is problematic.
That you have no respect for the foundational aspect of Quid Pro Quo shows in your conflation of publication.
The aspect of recorded interviews has already been addressed.
The who type of information has no bearing on the what of the patent right, and the fact that your aim there only leads to an ease of “efficient breach” for large entities belies your stated “concerns.”
And you dissemble about the “ease” of obtaining patents which has no bearing whatsoever in this discussion.
All in all, nothing on point from you at all.
Go figure.
MM that is a change to a different topic and ignores the power of a government bureaucracy.
Despite granting this particular patent, the examiner is still working for the USPTO.
The SAWS document released under the FOIA is quite damning.
link to drive.google.com
Just consider the topics or issues that will put an application in the SAWS black hole.
1) Various medical treatments considered perfectly feasible today including those which can prevent or cure HIV.
2) Applications with pioneering scope. (Aren’t inventors of such technology supposed to be rewarded with a limited monopoly?)
3) Abortifacients. (Why not hold up treatments for erectile dysfunction?)
4) Normal temperature superconductivity. (Back in 1977 I worked in a lab specializing is materials that exhibit characteristics of superconductivity at room temperature. A Nobel was granted to a senior researcher in normal temperature superconductivity back in 1987.)
5) Patent applications with a long pendency. (Why especially if there is a terminal disclaimer? The PTO should be trying to finish these quickly especially if there is a terminal disclaimer that would mean the limited monopoly would only last for a short period while the grant of the patent would eliminate other limited monopolies that should never have been granted. Is the PTO trying to stymie anti-monopoly laws and regulations?)
6) Other ridiculous categories that may be obvious to people with areas of expertise different from me.
SAWS seems to be a great way to concede technological leadership to other nations while clobbering the most innovative of US small businesses. One might even identify a potential for a corporatist government in SAWS.
Joachim, the entire point of the SAWS program is to ensure that important developments in the “topics” you mentioned are not hindered by the improvident granting of overbroad patent claims relating to those “topics.”
the SAWS black hole.
I’m trying not to laugh but it is funny to see the reflexive, reactionary hardcore patent lovers getting their undies in a bundle over an imaginary “black hole” that affects pretty much nobody and almost certainly none of their own patents or those of their clients.
You’ve got evidence of some application of yours that went into this “black hole”, Joachim? If so, let’s see it. Let’s the application number and let’s see this incredible earth-changing “innovation” that society is being deprived of because some guys in dark suits and sunglasses at the PTO believe it’s “too big for a patent.” Share it with everyone.
SAWS seems to be a great way to concede technological leadership to other nations while clobbering the most innovative of US small businesses.
How on earth do you get from SAWS to this hysterical conclusion?
One might even identify a potential for a corporatist government in SAWS.
What in the world is that supposed to mean?
Before I became an engineer, I was trained as an historical political economist. I believe I can discuss the pros and cons of various IP regimes fairly dispassionately.
The problem with SAWS starts with the categories of sensitive applications. How were they chosen, and who chose them? Did that person have the authority to make the choice? Why not other categories?
To tell the truth, as I pointed out, even the definition of “submarine” is quite dubious.
If SAWS means “reject at all costs”, and kick to patent to the PTAB, the Eastern District, or the CAFC, that sounds like an examination “black hole” to me, and I have to ask why even bother with examination at that point. Just tell the applicant to file an appeal to the Eastern District directly.
SAWS looks like a Star Chamber — something that the writers of the Constitution wanted to make sure would never appear in the USA.
If you wish to discuss patent applications offline, feel free to write me at Joachim.CS.Martillo@gmail.com, and I will send you an NDA.