The patent office’s Sensitive Application Warning System (“SAWS”) has been in place since at least 2006 – but until very recently, was shrouded in secrecy. That’s starting to change. Several law firms recently filed Freedom of Information Act (FOIA) requests related to the program, and in December 2014, the patent office, for the first time, placed a short description of the program on its website:
“The Sensitive Application Warning System (SAWS) program is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issues by the Agency. 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.
Finally, to ensure that this important quality assurance program continues to operate at maximal efficiency, the Agency is currently reviewing the program and will work to ensure that the program does not subject applications to unnecessary delays.
This quality assurance program applies to all pending patent applications that disclose potential SAWS subject matter, which typically represent a very percentage of all pending applications in an average month, usually around 0.04%.”
The patent office characterizes the SAWS program, generally, as “an information gathering system to apprise various areas of the PTO of the prosecution or patent applications that include sensitive subject manner.” But several internal memoranda that were only recently made public provide much more detail:
First, patent office examiners, along with their Supervisory Patent Examiners (“SPEs”), are required to identify patent applications – including reexamination and reissues – that meet the SAWS criteria. According to the patent office guidelines, examiners “are encouraged to be liberal … erring to identify rather than not … applications contains potential SAWS material.” Some of the criteria are pretty specific, but many are broad. For example:
Applications with pioneering scope
Applications related to patents presently being litigated
Business method claims
Applications dealing with automating a known manual process
Applications with long pendencies or multiple continuations going back five or more years
Second, once an examiner and his or her SPE have identified an application as containing SAWS material, the application is reviewed by a SAWS Point of Contact (“POC”) and “flagged” in a SAWS database. The examination then proceeds like any other application, up until the point where a Notice of Allowance is issued. Before a Notice of Allowance is mailed to the applicant, the SPE must complete a report about the application that is routed to various patent office employees including the applicable Technology Center Director. The Director must review the report, and it is possible that the report may also be sent to other office departments, including very high-level office employees. In short, when an application is placed in the SAWS database, its Notice of Allowance must be approved by several, and possibly many patent office personnel, rather than just the examiner and the SPE. In terms of if or when the Notice of Allowance will be mailed, the publicly available portions of the patent office’s guidelines simply state “[a]ny questions/concerns about the sensitive subject matter and/or the prosecution of the application are addressed prior to mailing the allowance.” Information that has recently been made public shows that when an application is placed in the SAWS system, it may be delayed for years or not issued at all.
Third, when an application is “flagged” for inclusion in the SAWS program, the applicant is not informed, nothing about the application’s SAWS status is placed in the file wrapper or noted anywhere else in the public record, and the applicant is unable to find out who is involved, beyond the examiner and the SPE, in reviewing the application. Several applicants have reported that examiners have provided scant information, or utterly refused to respond, to requests about whether particular patent applications are flagged in the SAWS database, and several FOIA requests seeking information about whether particular applications were flagged in the SAWS database have been denied.
Fourth, the patent office has recently published some statistics about the SAWS program. The statistics suggest that less than one half of one percent of patent applications are “flagged” in the SAWS system. However, the patent office’s recent posting on its website suggests that there may be similar “internal” programs that are yet unknown to the public.
At the end of the day, there appears to be very little if any recourse for applicants with applications flagged in the SAWS program, aside from one vague statement in the publicly available information. The patent office’s guidelines state that if an applicant “elect[s] non-sensitive subject matter … [or] amend[s] the claims to exclude sensitive subject matter,” a SAWS POC can be notified, and the application may be removed from the SAWS database. However, an applicant – even if it were sure what subject matter to elect or what amendments to make – would apparently have no information about the status of the application in terms of whether or not, or when, it is removed from the SAWS program.
John Lane is the Managing Principal of Fish & Richardson’s Houston office. In his fifteen years of practice, he has represented plaintiffs and defendants alike in scores of patent litigations, in courts throughout the country. His clients range from innovative, emerging start-up...