SAWS Program Has Patent Attorneys Concerned

SAWS. If you think it sounds ominous, you’re not the first. Alyssa Bereznak at Yahoo Tech recently broke the story on this shadowy USPTO system.

WHAT IS SAWS?

SAWS stands for Sensitive Application Warning System and it delays the processing of specific types of applications. According to a leaked USPTO memorandum dated March 27, 2006:

The SAWS program was designed to assist in processing of patent applications identified as claiming subject matter of special interest that, if issued, would potentially generate high publicity or would potentially have a strong impact in the patent community.

That doesn’t really clear things up. According to USPTO documents, SAWS covers a wide variety of subject matter, including “applications dealing with inventions that would harm people or the environment, compromise national security or public safety,” “applications claiming a method/apparatus to take a human life (e.g. suicide machine),” and “Reexamination and Reissue cases [involving] . . . technology/companies that are recognized by the public or have been reported in the media . . . .” Even more broadly, the program deals with those applications that “would potentially generate unwanted media coverage (i.e., news, blogs, forums).” The list is lengthy and vague. It seems to cover not only war machines, but possibly your smartphone. You can view the whole list as part of the USPTO’s FOIA documentation.

HOW ARE APPLICATIONS TAGGED FOR SAWS?

The process begins with the Patent Examiner, who makes the initial identification of potential SAWS applications. After the initial identification, the home Supervisory Patent Examiner (SPE) discusses the the application with the Examiner. The SPE is directed to “use their judgment and be liberal in SAWS application identification . . . .” If the Examiner and SPE agree that the application could be covered by SAWS, the SAWS Point of Contact (POC) is alerted. In the event that a SAWS application is approved, the SPE is tasked with preparing a SAWS Report that is submitted to and reviewed by the SAWS POC. After review by the POC, the Report is considered by the Technology Center (TC) Directors, who make the final decision as to whether the Report should be forwarded to other areas of the USPTO.

IMPACT OF SAWS DESIGNATION

A SAWS designation can have a significant impact on an application. According to the USPTO’s website, the average patent application pendency is 24.6 months. However, as you can see from the above explanation, the SAWS process takes time. As explained by Bereznak:

SAWS-marked patents must be approved by anywhere from three to nine people and can be delayed for years. There is no official channel to notify an applicant once her patent is in the system, and the Patent Office has denied requests to divulge what applications are on the SAWS list.

As you might have guessed, some practitioners are less-than-pleased. It’s not just the delay that has them concerned. They are wondering what effect the system has on innovation. As Thomas Franklin, a partner at Kilpatrick Townsend & Stockton LLP, told Yahoo Tech: “If it’s a startup trying to get traction against an established player, they may not get funding because they don’t get the patent in place. [SAWS] favors the entrenched incumbent . . . .”

HOW DID WE LEARN ABOUT SAWS?

While the existence of such a system has long been suspected, proof came in the form of a leaked memo dated March 27, 2006. The USPTO issued this memo as a reminder to all TC 2800 managers of the SAWS guidelines. Thanks to the FOIA request by Kilpatrick Townsend & Stockton LLP, we now have more information.

IS IT LEGAL?

While this question will be the subject of much debate, 35 U.S.C. 181 gives the Commissioner of Patents the ability, under certain circumstances, to keep secret those applications which might be detrimental to national security. The same section also permits the Commissioner to withhold the granting of a patent in specific instances. This provision, however, only covers a portion of the applications detailed in the USPTO documents and does nothing to alleviate concerns about constitutionality. The true test will come in the likely event that the program is challenged in the courts.

Authored by: Austin Underhill

READ MORE ABOUT SAWS

The U.S. Government Has a Secret System for Stalling Patents by Alyssa Bereznak - Yahoo Tech

‘Secret’ patent review system raises innovation concerns by Michelle Meyers - CNET

Secret PTO Program Delays Patent Approvals by Lisa Shuchman - Corporate Counsel