A few months ago, a story broke about a secret program at the USPTO, the “Sensitive Application Warning System”. The upshot was that the USPTO had a program under which patent applications could, unbeknownst to the applicant, be flagged for heightened scrutiny, leading to delays in prosecution. The reasons for such flagging of the application were diverse, including reasons like issuance of the patent might cause embarrassment to the PTO. Remember the patent on “Method of Exercising a Cat”?
After being both criticized (think IRS and Lois Lerner) and ridiculed, as well as being subjected to a Freedom of Information Act request from Dennis Crouch at Patentlyo, yesterday the USPTO relented. See the announcement here.
I think we’re all glad to see SAWS going by the wayside. But would it have been so hard for the PTO to show just a modicum of contrition in announcing SAWS' demise? The announcement makes it sound like the program is being discontinued because it's now obsolete, with no acknowledgement that maybe, just maybe, the PTO was out of line in having a secret program, even back in the days before early publication of patent applications.
There's another aspect of the announcement that I found slightly off-putting, but maybe I'm overly sensitive about this topic. From the announcement:
"And today, unlike when the SAWS program was created, most applications are published eighteen months after submission, exposing them to public scrutiny and the potential for third-party submissions of prior art."
That statement is technically correct but, to the extent that it implies that third parties can now be watchdogs over the prosecution process, a bit misleading:
When the American Inventors Protection Act was adopted in 1999, facilitating 18-month publication, it included a caveat (codified as 35 USC 122(c)) that the Director "shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant." It also fixed a narrow time window (in 35 USC §122(e)) for third parties to submit printed prior art. The idea was to keep the PTO from being inundated with third-party prior art submissions. Because, you know, over at the EPO, they were just swamped with those third-party submissions, to the point that the EPO couldn't function. (Wait, they weren't? How 'bout that!)
When the obscenely misnamed “America Invents Act” was enacted in 2011, it created a mechanism for third party submission of prior art - see 35 USC §301 - but kept the language of 35 USC §122 quoted above. There's an obvious tension between these two statutory provisions, the one trying to limit the window in which prior art publications can be submitted and forbidding pre-issuance protests or oppositions, the other intending to facilitate prior art submissions, including statements regarding the relevance of the prior art to the claims.
This tension forced the USPTO into Wise Men of Chelm mode, leading to what I call the USPTO's "You-can-lead-a-horse-to water-but-you-can't-make-him-drink" approach to third-party prior art submissions: you can now provide the PTO with a prior art publication under section §301, outside the time frame listed in §122(e), and you can explain why it's relevant to a particular claim or claims. But if you include the phrase "and therefore what is claimed in claim X lacks novelty/is obvious" or a variation thereof, the PTO will bounce your section §301 submission because it contravenes §122(c).
The inability to connect all the dots for the USPTO in these §301 requests is a weakness in the system. True, there are now several types of post-grant proceedings available, and they do allow third parties to make substantive arguments about the non-patentability of particular claims in view of particular prior art publications, but those proceedings are expensive. If the claims aren’t allowable to begin with, it would be most efficient for the USPTO to never issue those claims in the first place. Third party prior submissions, including explanation and arguments, can assist in that process. (If you’re concerned about abuse of the system, there are solutions, for example limiting the number of bites at the apple, or restricting the temporal window in which such submissions may be made.)
So yes, the dead-SAWS announcement is correct that nowadays third parties can submit printed prior art, or even statements of the applicant made in a Federal Court or before the PTO. That’s an advance over the situation that prevailed when SAWS was supposedly initiated in 1994. But it’s not the case that those third parties can provide the PTO with what they believe to be the conclusions to be drawn from that prior art with respect to the claims at issue. Repeal of 35 USC §122(c) would seem to be necessary to enable that step. And given the rate at which USPTO examiners ignore the publications found in PCT searches, it’s clear that it will take a change in the examination culture at the USPTO for examiners en masse to utilize prior art publications found by others.