Analysis: “The PTO’s cover-up of the secret SAWS Program”

The American Center for Equitable Treatment takes on the PTO’s claim that its secret “SAWS” program for blocking patents was really about “quality control”:

Further, the record reflected no statutory, regulatory, or informal authority or framework for any PTO decision on an application that is informed by the application’s SAWS status.  This is because no decision or action on an application can be taken pursuant to secret annotations or designations not shared in writing with the patent applicant. 37 C.F.R. § 1.2 (“The action of the [PTO] will be based exclusively on the written record in the Office.”).  According to the PTO’s own explanation, the SAWS designation, as the acronym suggests, is merely an internal “warning,” “designed as an information gathering system to apprise various areas of the PTO of the prosecution of patent applications that include sensitive subject matter.”  The SAWS designation is simply designed to “help USPTO personnel in the Office of the Commissioner for Patents and the Office of Public Relations interact with the press about applications that may generate a high level of publicity.”  Examination and allowance of applications are totally independent of SAWS designation, as the SAWS Report is normally prepared at the time of allowance.  “The intent is to minimize any direct impact on the examination process.”  In conclusion, the SAWS program had nothing to do with examination of an application on its patentability merits.

Even worse, it concludes, the PTO misled the public, Congress, and the courts about the whole thing.

Read the full post here.

Report: PTO Program for Blocking Issuance of Applications “Disproportionately Targeted Individual and Small Entity Inventors”

The American Center for Equitable Treatment has analyzed data concerning the PTO’s secret “Sensitive Application Warning System” that the agency used to flag applications to block their issuance and finds that “applications of individual and small entity inventors were disproportionately affected by the SAWS program by a factor of six compared to their relative proportion to large entity applications.”

Read the full analysis here.

Court Orders PTO To Produce Dispute Email Disparaging Inventor

We have reported previously on inventor Gilbert Hyatt’s FOIA lawsuit to obtain an email from one patent examiner working on Mr. Hyatt’s patent applications to another concerning Mr. Hyatt, which the PTO argued was not even an “agency record” and therefore not subject to FOIA at all.

In an order filed on July 24, the United States District Court for the District of Columbia ordered the PTO to produce the disputed email to the Court for its review. The Court also chided the PTO for its failure to support its request for a judgment allowing it to withhold the email:

Despite the vigor with which the PTO is opposing production of the Khuu email, the government has only described it as containing a “personal opinion [Ms. Khuu] expressed to a close colleague in the context of an email exchange about divorce proceedings.” [citation omitted] The PTO has failed to cite for the Court which jurisdiction, in which galaxy, would find that description enough for the government to carry its burden to establish that there is no question of material fact remaining in this matter.

Read the order:

Khuu Order

Report: Judge Backs Inventor In Suit Over Long-Stalled Patent Apps

Law360 covers inventor Gilbert Hyatt’s recent litigation victories against the PTO:

A federal judge has ordered the U.S. Patent and Trademark Office to issue three patents to prolific inventor Gilbert Hyatt, finding that many of his patent claims were incorrectly rejected, a win for Hyatt in his case alleging the office is wrongly stalling his patent applications.

The three patents at issue in the decision represent a small fraction of the nearly 400 applications Hyatt has pending at the USPTO. He alleges in a related suit that the office is using a variety of unlawful tactics to ensure those applications are never approved.

Hyatt’s attorney, Andrew Grossman of Baker & Hostetler LLP, said Tuesday that Judge Lamberth’s decision is an important development in the case that shows when Hyatt’s applications are given fair and impartial review, he will win.

“The decision is a vindication of Gilbert Hyatt’s vision as an inventor and persistence in the face of an agency that was determined to violate his rights at every turn,” Grossman said. “The PTO played hardball against Mr. Hyatt, and that makes its loss all the more devastating for the agency and all the more valuable for Mr. Hyatt.”

Read the full article here (PDF):

Judge Backs Inventor In Suit Over Long-Stalled Patent Apps


Mr. Hyatt’s court wins also received coverage from Bloomberg News.

Court: PTO Exiled Inventor’s Applications to a “Proverbial Never-Never Land”

In a decision last week, the United States District Court for the District of Columbia rejected the PTO’s claim that independent inventor Gilbert Hyatt engaged in unreasonable and abusive delay on his patent applications. Instead, the Court found, the PTO had placed Mr. Hyatt’s applications “in a proverbial Never-Never Land,” blocking Mr. Hyatt from prosecuting them for approximately a decade.

The Court also had stern words for the PTO’s argument that Mr. Hyatt’s litigation prompted it to block progress on his applications:

The suspensions between 2003 and 2012 appear largely to be responses to pending litigation, not the applications, themselves. To the extent PTO resents having had to devise “unusual procedures … that were not needed with respect to other applicants, who for example, did not litigate regarding procedural issue[s] and did not file Section 145 appeals,” the Court finds that sentiment to be somewhere between vexing and outright galling. It takes a certain chutzpah for a government agency to chafe against citizens seeking to vindicate their rights through lawfully available means, even in those cases where the opposing party’s litigious zeal is itself remarkable for any number of reasons.

(citations omitted).

Read the full opinion:

Lamberth Laches Decision


In a separate decision, the Court also found that Mr. Hyatt was entitled to the issuance of patents on all three of the applications that went to trial. Read that opinion:

Lamberth Merits Decision

Expert: Secret PTO SAWS Program Likely Illegal

Law360 reports on an analysis by former Commerce Department Inspector General Todd Zinser of the PTO’s secret “SAWS” program to block issuance of patent applications:

In an interview, Zinser said the policy of keeping applicants in the dark about SAWS was “just not right” and the secrecy of the program may have violated federal record-keeping requirements.

“They basically instructed examiners to provide misleading information to applicants. That’s outrageous,” he said. “It’s really bothersome that the leaders of the office would conduct themselves that way, systemically.”

Zinser said that if the board, which rules on whether an application was correctly rejected, was in fact made aware of the SAWS designation during the appeal, it would be “especially unfair.” The applicant would be unaware of the program and could not address with the board the issues that caused the patent to be singled out.

“The applicant and the applicant’s attorney would have had no idea what they were arguing against. It’s a secret process within a secret process,” Zinser said. “The SAWS designation gives the application some type of stigma.”

The article also reports new details on how SAWS operated:

How this worked in practice is illustrated in a 2012 email exchange produced by the office, in which an examiner asks a supervisor how to respond when an applicant calls to ask about the status of an application that the examiner has allowed but has been put in SAWS.

“What should I tell them? That the case is under SAWS review and for [an] update they should contact [another official]?” the examiner asked.

Two minutes later, the supervisor responded, “NO … you do not [say] anything about it being a SAWS case. Just tell them that it has been submitted by you … and appears to be going through [some] additional review which happens every now and again.”

Read the full article here (PDF).

Attorney: PTO “has no response to our overwhelming evidence of its bad faith” against inventor

Legal trade publication Law360 covers inventor Gilbert Hyatt’s suit against the PTO challenging its decision to never issue him another patent.  As the article reports, the PTO recent filed its motion to dismiss the lawsuit, but the PTO motion has no response to Mr. Hyatt’s central claim in the suit:

Hyatt’s attorney, Andrew Grossman of Baker & Hostetler LLP, said Monday that the USPTO’s motion simply ignores the complaint’s allegations that the office has unfairly put Hyatt’s applications in “bureaucratic purgatory.”

“The fundamental issue in this case is that the PTO has decided never to issue another patent to Mr. Hyatt ever again, no matter his entitlement to one, no matter his constitutional due process rights, no matter the merits of his inventions,” he said. “It’s bizarre that the PTO’s motion to dismiss has nothing to say about that fundamental claim. It just has no response to our overwhelming evidence of its bad faith.”

The USPTO is wrong to say that judicial review is unavailable in this situation, Grossman said, because “when agency processes run off the rails, the courts exist to put them back on track.”

Read the full article here.

PTO Refuses To Release Images Mocking Inventor

On May 16, inventor Gilbert Hyatt asked the PTO to disclose any “meme” images depicting him that were circulating among the examiners responsible for examining his patent applications. He subsequently paid the $1,056 that the PTO demanded to conduct the search and review the records.

On July 18, the PTO finally responded: yes, the images exist, but, no, you can’t have them.

As it did with the email between examiners discussing Hyatt’s personal life, the PTO has taken the position that a communication between examiners carried out on the PTO’s email system concerning the person who is the subject of their work is actually not an agency record at all and therefore not subject to FOIA:

Hyatt - Hyatt Image FOIA Denial


Hyatt’s litigation to compel the PTO to disclose the email is briefed and currently awaiting decision.

How Hyatt Won Discovery Against the PTO

After the PTO asserted in court that inventor Gilbert Hyatt had purposefully delayed agency action on his own patent applications, Mr. Hyatt sought–and obtained–discovery into the PTO’s handling of his applications, its Hyatt-specific policies, its secret SAWS program, and its bias and animus against him. Unfortunately, many of those materials remain confidential, on the PTO’s say-so, and so the information they revealed is largely redacted in the public versions of Mr. Hyatt’s legal filings.

But the PTO can’t suppress Mr. Hyatt’s own impressions and recollections. Here, for example, is the declaration that he filed in support of his request for discovery: