'Secret' patent review system raises innovation concerns

A law firm obtains documents that it says reveal potential problems with the US Patent and Trademark Office's covert system for red-flagging controversial applications.

Michelle Meyers
Michelle Meyers wrote and edited CNET News stories from 2005 to 2020 and is now a contributor to CNET.
Michelle Meyers
3 min read

A law firm worries that the USPTO's review process for sensitive applications may stifle innovation.

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.

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.

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.

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.