Monday, 08 December 2014 18:54

Recent FOIA Request Reveals More Information on USPTO Sensitive Application Warning System

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According to the documents produced in response to a recent USPTO FOIA request, the Sensitive Application Warning System (SAWS) is “designed as an information gathering system to apprise various areas of the PTO of the prosecution of patent applications that include sensitive subject matter.” “Sensitive” subject matter, in this case, has rather broad scope including applications disclosing frivolous, silly, or controversial subject matter, especially subject matter generating extensive media coverage. A 1989 memo initially detailing the SAWS project was publicized in 2006, but the most recent FOIA request provides additional insight, including USPTO internal memoranda to each technology center outlining specific topics for each center as well as protocol for flagging and reviewing “sensitive” applications.

The exemplary “sensitive” subject matter ranges from stem cell technology, abortion methods, and gene therapy, to perpetual motion machines, anti-gravity devices, and faster-than-light vehicles. Additionally, some corps-wide “sensitive” subject matter includes applications which, if issued, could generate unwanted media coverage, applications including explicit recitations of race, ethnicity, or origin, as well as applications identified as containing claims which would be subject to a 101 rejection in view of the Mayo v. Prometheus decision.

Examiners are encouraged to be liberal in their identification as to whether or not an application contains potential SAWS material. Furthermore, examiners are told to pay special attention to the subject matter of the title, abstract, and cover drawings. Thus, it appears that the Patent Office is concerned with its public image and would prefer to avoid being viewed as approving of such “sensitive” patents.

On the surface, at least, this should not be problematic. However, anecdotal reports suggest that the SAWS program is having an adverse impact on prosecution times, which are already quite lengthy. Additionally, due to the secretive nature of the program, applicants are not timely alerted when an application is in condition for allowance. Instead, each SAWS application must go through a further review in front of SAWS quality assurance personnel before a notice of allowance may be mailed to an applicant. Many believe the lack of official procedure and no method of appealing a SAWS designation implicates procedural due process concerns.

On the one hand, SAWS can be seen as an extra safeguard for weeding out "non-inventions", applications with overbearing scope, and the like, which generally tend to stifle innovation through chilling effects. However, others argue the clear potential for abuse by the USPTO outweighs the potential benefits of the program. What is certain is that as the USPTO has yet to give official comment, more information about the SAWS program and its procedures is quite necessary before a truly productive discussion can be had.

Read 3390 times Last modified on Tuesday, 09 December 2014 17:20
W. John Eagan

Mr. Eagan earned his bachelor’s degree in Mechanical Engineering from Lehigh University and his law degree, with honors from the University of Miami. While at the University of Miami he served as the Inter-American Citator and an Articles and Comments Editor for the Inter-American Law Review. Mr. Eagan is admitted to practice law in the State of Florida and concentrates his practice in Intellectual Property litigation.