[A2k] 'Secret' patent review system raises innovation concerns - CNET

Elizabeth Rajasingh elizabeth.rajasingh at keionline.org
Thu Dec 4 12:51:18 PST 2014

The following story about the USPTO "Sensitive Application Warning System
(SAWS)" notes that the patents with potientially "pioneering" or "broad"
scope are tagged for additional review.


​Patents have long been a valuable tool for tech companies, providing
protection for innovations and extracting royalties. But a new report
charges that the US Patent and Trademark Office has a secret program it
uses to delay patents it views as controversial or inconvenient.

The Sensitive Application Warning System (SAWS) is the Patent Office's
"information gathering system" that triggers additional reviews for
applications "that include sensitive subject matter," according to USPTO
documentation. But a San Francisco-based law firm has documents it believes
show the program can stifle innovation, ultimately hurting consumers,
according to a Yahoo Tech report Wednesday.

"If a startup is getting sued by an established player, sometimes their
only hope is to get a patent very quickly," said Thomas Franklin, a partner
at Kilpatrick Townsend & Stockton, adding that SAWS keeps that from
happening. The system favors an entrenched incumbent over an innovator who
might have breakthrough technology, he said.

SAWS has been around for at least a decade, a USPTO spokesman said, but
details about the program are not readily available. In fact, Franklin,
whose firm often represents major tech companies like Apple, Google,
Twitter and Oracle, said he only found out about it by accident from
someone reviewing one of his client's application. The reviewer told him
the program is "secret," Franklin said, "so we got very alarmed at what
this program was about."

Watching first hand how his and other cases have been held up by the SAWS
designation, Franklin said his firm tried to get a better sense of what
triggers such a response by filing Freedom of Information Act requests with
the office. The responses to the firm's FOIA requests (one of which is
posted below) offer very little in the way of current and concrete
protocol. Franklin said his firm plans to appeal one of the FOIA requests
that was denied and still hopes to obtain a list of all the companies that
have been given the SARS designation.

But the documents do show that reasons for referring applications for SARS
include "'broad' or 'pioneering scope,' 'seemingly frivolous or silly
subject matter,' or those 'dealing with inventions, which, if issued, would
potentially generate unwanted media coverage,'" the Yahoo Tech report
points out and documents below substantiate.

The spokesman for the patent office takes issue with those claims,
insisting that SAWS is about maintaining quality patents by offering
"another set of eyeballs." The USPTO has "no interest in stalling patents
unnecessarily," the spokesman said, adding that that such a process would
conflict with the agency's stated goal of reducing patent pendency, or the
number of patents processed.To Franklin, the latter makes it seem like "any
patent that could result in bad PR for the patent office" could warrant a
SAWS review. The vague, arbitrary nature of the categories raises some
constitutional issues, he added.

Other documents the USPTO provided list areas of technology that might
trigger a SAWS review, including "smartphones," "Internet-enabled systems,"
and "processes and apparatuses involving education," Yahoo Tech pointed out.
That seems to encompass a lot of evolving tech. But the USPTO spokesman
said "out of the hundreds upon thousands of applications that are reviewed
every year," only "a handful of applications" get the SAWS review.​

Elizabeth Rajasingh
Perls Fellow, Knowledge Ecology International
1621 Connecticut Ave. NW, Suite 500
Washington, DC 20009
*elizabeth.rajasingh at keionline.org <elizabeth.rajasingh at keionline.org>* |

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