SAWS gets the axe

During World War II, the US government displayed posters across the country with the tagline “loose lips might sink ships”. The idea was that because the country was infiltrated with spies from the German army, any discussion on military strategy may mean that secrets would get back to enemy forces.

While a slip of the tongue from a patent examiner at the US Patent and Trademark Office (USPTO) clearly would not have the same dramatic impact, it has led to the sinking of the agency’s Sensitive Application Warning System (SAWS). The USPTO announced at the beginning of March that it planned to close the programme as soon as any remaining applications are processed.

Set up in 1994, the programme was designed to bring an “additional assurance quality check” to “sensitive” patent applications. Between three and nine examiners assessed SAWS-designated applications, as opposed to the usual number of one or two. Applicants were not told if the USPTO had put their application into the SAWS programme.

But it went unnoticed until an examiner allegedly accidentally tipped off lawyers at Kilpatrick Townsend and Stockton about its existence, prompting the law firm to file a freedom of information (FoI) request.

“To us as lawyers, it raised constitutional alarm bells that the government is doing something secretly,” says Thomas Franklin, partner at Kilpatrick Townsend.

He says the programme was “originally intended to go after silly things, such as patent applications people filed in the late 1990s for methods of swinging on a swing”, because finding prior art for such things was difficult (and therefore needed more scrutiny).

FoI requests submitted by Kilpatrick Townsend revealed that the system had grown beyond the purpose of scrutinising frivolous patent applications. Those that the USPTO said could “potentially generate media coverage” or had “claims of pioneering scope” would be subject to review in the SAWS programme, according to the response. The USPTO, however, has yet to disclose which applications went through SAWS.

“When you let something develop without the light of day, it can develop in a way that gets away from its original intention because there is no input or scrutiny from stakeholders,” Franklin says.

Before the USPTO confirmed the existence of SAWS, some patent applicants and lawyers had experienced sudden delays in the processing of applications that seemingly would otherwise have no problem going through the office.

The USPTO published a three-page report at the beginning of March, at the same time it announced it was closing down the programme. The report, published following a review of SAWS in January, revealed that on average just 0.04% of patent applications submitted each month would go through the SAWS programme.

Despite initially coming out in defence of the programme, the USPTO announced at the beginning of March that it would close SAWS because it was only “marginally utilised” and “provides minimal benefits”.

The key issue, however, is the lack of transparency surrounding the SAWS programme. Steven Rubin, partner at law firm Moritt, Hock & Hamroff, says it closed because “once it got out in the way that it did, it became a source of embarrassment for the USPTO, or they didn’t really have a good justification for it. The criteria for the programme are so vague”.

He adds: “Once you find out that one thing is going on then you have to be concerned that there is a whole bunch of other stuff going on.”

For Rubin, the way the system has been revealed contributes to the loss of confidence many applicants have had in the USPTO since the Alice decision in June. In that ruling, the Supreme Court ruled that a “computer implementation” of a novel process is not patentable. But this ruling has meant there is a lack of clarity for applicants about what is patentable.

Franklin, however, believes that the entire saga is a success story for the media.

“This is a programme that was trying to keep the patent office out of the media and if you think of how they reacted to the whole thing, by shutting it down, then this is a success story of the press.”

Ironically, the USPTO’s attempt to keep SAWS away from media attention (according to the FoI) has now meant that many lawyers will keep a closer eye on its systems and processes.

The USPTO is now looking to re-build confidence. The appointment of Michelle Lee as the director, coupled with the office hosting its first ever patent quality summit, an event where stakeholders can discuss how to raise the quality of patents issued, is intended to raise confidence in the office again. But due to the way the SAWS programme was revealed, worries about practices at the office may remain for some time to come.

The USPTO reaffirmed to WIPR that it closed SAWS because it provided minimal benefits.