Prosecution Laches Is Illegitimate—And SAWS Proves It

One of the ways judges typically evaluate whether a ruling makes sense is to game out the logical consequences of the ruling to see whether it will lead to absurd results. There is little doubt that the U.S. Court of Appeals for the Federal Circuit’s prosecution laches doctrine isn’t just doctrinally off-base—it leads to absurd results, which makes the doctrine structurally unworkable.

The Federal Circuit’s presumption that any patent taking more than six years to prosecute is presumptively unenforceable places the burden on patent owners to demonstrate as a threshold matter that the length of prosecution was reasonable. But the brutal, inconvenient truth is that the United States Patent and Trademark Office (USPTO) itself has twice operated secret programs that froze applications for years while telling the outside world nothing—including the applicants who found themselves assigned to this pit of despair from which no applications would emerge as granted patents.

There is little doubt that at least some applications were, without the knowledge of the applicant, prevented from obtaining patents even though all statutory requirements had been satisfied. For much of the last 30 years the USPTO has frozen applications, blocked allowances, and manipulated prosecution timelines behind closed doors. And IPWatchdog has learned that the Weaponization of Government Working Group at the Department of Justice (DOJ) sent a letter to the USPTO several months ago in an effort to investigate this so-called Sensitive Application Warning System (SAWS), which has secretly hauled off so many applications into the pit of despair.

How many fell victim to this government-manufactured trap is not known because there has never been a full accounting. Under this inescapable reality it is fundamentally unfair for the Federal Circuit to require applicants “prove” prosecution delays were reasonable. Not only it is unfair, for some applicants caught in SAWS it is impossible to prove how or why prosecution lasted as long as it did. And this makes the Federal Circuit’s prosecution laches doctrine bad law, bad policy, and fundamentally unfair.

A Presumption Built on Fiction: The Applicant Controls Nothing After Filing

The Supreme Court settled this more than a century ago: once an applicant files and complies with statutory requirements, the USPTO “takes possession of the matter” and determines the timing—period. Nothing within the modern patent system changes that. Yet the Federal Circuit continues insisting that applicants somehow “delayed” prosecution even when they have acted fully within every statutory deadline.

As documented repeatedly, the Federal Circuit has created a direct conflict with controlling Supreme Court precedent, particularly SCA Hygiene and Petrella, which explicitly bar laches where Congress has defined statutory timelines. The presumption that any prosecution exceeding six years makes a patent presumptively unenforceable functionally turns Section 282 on its head, contorting the presumption of validity into a presumption of unenforceability. Thus, the prosecution laches doctrine has never made sense. But with the USPTO secretly shelving applications through SAWS the doctrine of prosecution laches becomes entirely indefensible.

SAWS I: The USPTO’s First Secret Blacklist (1994–2015)

For nearly 20 years, the USPTO operated the Sensitive Application Warning System (SAWS I), a secret program that flagged applications for “heightened scrutiny” and effectively blocked issuance indefinitely. Applicants were never told their applications had been flagged. They were not told the Office had stopped acting. They were not told why their cases sat frozen. Applicants were never given the opportunity to argue or amend applications the USPTO found so controversial that they needed to be banned. And FOIA requests did not reveal a SAWS designation and the USPTO has refused to identify which patent applications were “assigned” a SAWS designation. See USPTO Docs Shed Some Light on Secretive SAWS Program.

The SAWS I program officially ended in 2015, but its impact was catastrophic. Some applicants had applications trapped for well over a decade. And the Federal Circuit now presumes that any prosecution exceeding six years is unreasonable? How could an applicant caught up in SAWS I ever prove anything when the USPTO still refuses to identify which applications were affected? This alone means the Federal Circuit’s prosecution laches doctrine is built atop a sand foundation.

SAWS II: The Biden-Era Resurrection (2021–2025)

The secret handling of patent applications did not end in 2015. Yes, SAWS I was sunset in 2015 by then USPTO Director Michelle Lee, but it didn’t take long for another very similar program to take its place.

In early June 2025, IPWatchdog learned that a review by the Office of Patent Quality Assurance (OPQA) was being conducted in applications after examiners had determined applications were allowable but before a Notice of Allowance was issued by an examiner. The purpose of such a review was ostensibly to provide the examining corps with information to assist in improving the quality of issued patents. See MPEP 1308.03. This quality assurance protocol authorized by the is intended not to be used to affect allowance decisions, but instead to be used as an educational tool to aid in identifying best practices and problem areas. Id. However, under the Biden-Era policy, if OPQA identified an error prosecution was not reopened and applicants were not notified. Instead, the views of OPQA were secretly passed to examiners who then without notice to applicants would change allowance decisions. This secret review at allowance is reminiscent of SAWS I, and why we at IPWatchdog have referred to it as SAWS II.

In other words: the USPTO once again created secret, extra-statutory barriers to issuance—barriers totally invisible to applicants who were acting in timely, fully compliant fashion.

So, how could an applicant caught with a SAWS II designated application demonstrate the length of prosecution was reasonable when they weren’t even notified that an about to be allowed application was now marked as not allowable after OPQA review? To possess the knowledge necessary to prove the USPTO was engaging in shenanigans would require telepathy.

The Fatal Problem for Prosecution Laches: SAWS Creates Applicant Blindness

The Federal Circuit’s prosecution laches doctrine rests on a premise that applicants control the pace of prosecution and are responsible for “unreasonable delay.” This premise fails for at least two reasons.

First, it ignores the fact that applicants are statutorily given time within which to take an action and if there is a failure to act within the statutory timeline the application goes abandoned. If applicants act within the statutorily allocated time, it is impossible to cause unreasonable delay. In fact, any delay interjected by the application is specifically and unambiguously allowed by statute.

Second, whether you agree or disagree with the premise that applicants cannot unreasonably delay, it is beyond question that there are some applicants who could never prove anything about the nature of the delay because we know for a fact that from 1994 to 2015 and 2021 to 2025 there were applicants who were deemed to have allowable applications after examination that were simply refused patents and never told why. How many applicants found themselves in this SAWS pit of despair is impossible to know because the USPTO won’t say.

Time to End Prosecution Laches

The Federal Circuit’s prosecution laches doctrine isn’t just wrong—it’s detached from reality. The idea that any patent taking more than six years to prosecute is presumptively unenforceable is judicial overreach built entirely on a legal fiction. And the USPTO’s own secret programs—SAWS I and the newly uncovered SAWS II—prove exactly why the doctrine cannot stand. It violates basic notions of fundamental fairness, decency and common sense to place a burden on a party that couldn’t possibly meet that burden because they have unknowingly been playing a rigged game! Talk about arbitrary and capricious—this is just plain absurd.

The deck isn’t just stacked against patent owners and applicants, this game is fundamentally rigged and innovators are the victims. It is time for the Federal Circuit to once and for all drive a stake through the heart of this prosecution laches monster.

Image Source: Deposit Photos
Author: gannenko
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