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Shawn Landersz for CAS-IP / www.flickr.com
30 April 2015Patents

USPTO hit with class action lawsuit over SAWS programme

The US Patent and Trademark Office (USPTO) has been hit with a class action lawsuit over its Sensitive Application Warning System (SAWS) for patents, which it scrapped last month.

Mauro DiDomenico, an inventor at technology company eVideo Owners, filed the lawsuit at the US Court of Federal Claims last week (April 24), where he alleged that two of his patent applications were delayed due to the SAWS programme.

Under the programme, patent applications were assessed by between three and nine examiners, as opposed to the usual one or two, if the office judged that the application might result in “unwanted media coverage”.

DiDomenico filed the first of his patent applications in 2001. The patent included claims for providing video on demand through the internet and mobile phones and a payment system to access the content.

After the USPTO rejected the application in 2009, DiDomenico appealed against the decision.

On October 2011, the decision to reject the application was reversed by the Board of Patent Appeals and Interferences, which is now called the Patent Trial and Appeal Board.

The patent is still under review.

DiDomenico filed a similar patent application in December 2011, which was rejected in 2014. He has since appealed against that decision and the patent is still under review.

In the lawsuit, DiDomenico speculated that his application may have gone through the SAWS programme and said there could be more than 100 people whose applications were also affected.

DiDomenico requested that the court decides the appropriate amount of damages based on the number of people affected.

The SAWS programme, which was established in 1994, was revealed in December last year after a patent examiner at the USPTO let slip details about the programme to lawyers at law firm Kilpatrick Townsend & Stockton.

After the firm filed freedom of information requests for more information about the SAWS programme at the end of last year, the USPTO confirmed its existence.

Up until then patent applicants were unaware of the programme.

The SAWS programme was closed on March 2 this year after the USPTO said it was not used very often and provided minimal benefit.

The office published a three-page report that revealed that on average only 0.04% of patent applications submitted each month went through the programme.

Kate Gaudry, an associate at Kilpatrick Townsend, told WIPR that she had heard that many people had considered filing similar lawsuits, but is unaware of others beyond DiDomenico who have actually taken the step of initiating a lawsuit.

Neither the USPTO nor Joseph Zito, partner at law firm Ditthavong & Steiner, which is representing DiDomenico, responded to a request for comment.

The USPTO declined to comment.

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