Is the USPTO Flagging Selected Patent Applications for Extra Scrutiny—Again?

A battle is currently being waged in a federal court Washington D.C., where two prominent inventors are accusing the United States Patent and Trademark Office (USPTO) of singling out and stalling their pending patent applications, which might otherwise be allowable, for extra scrutiny under ill-defined standards. The inventors allege that the USPTO has resurrected a program that started in 1994, that purportedly justified such added scrutiny, which the USPTO claims to have discontinued in 2015.

In point of fact, flagging certain patent applications for special treatment  was going on at least as far back as 1981. It was wrong then. And it is wrong now.

A Bit of History

Before 1995, patents were entitled to a term of 17 years from issuance, no matter long they might have been pending. This was true even where a patent issued from a long chain of continuations.

The 1995 General Agreement on Tariffs and Trade (GATT) amendments changed this. Going forward, for applications having an effective filing date after June 8, 1995, the term would be 20 years from the effective filing date. Not surprisingly, the USPTO was flooded with applications in the days and weeks before June 8, 1995.

Another feature of life in those pre-GATT days was this: unlike today, where most applications are published 18 months from filing, pending patent applications were not made public.

These pre-GATT conditions had led to a phenomenon called “submarine” patents. These were patents that issued after long (sometimes intentionally long) pendency. When they finally “broke the surface” and issued, many companies and even entire industries found that they were infringing and might have to pay royalties. To put it mildly, they were not pleased.

One judicially created “fix” for these long-pending applications was the doctrine of “prosecution laches,” which could render a patent unenforceable. But that doctrine has come under attack as inconsistent with Supreme Court precedent abolishing enforcement laches in patent cases.

These types of situations gradually diminished after the enactment of GATT and the routine publication of patent applications. By now, it is a good guess that the vast majority of applications filed before the GATT deadline have either issued or gone abandoned.

But not all of them.

Enter Gilbert Hyatt

I recently came across a February 11, 2026, court filing by Gilbert Hyatt (and his co-plaintiff Paul Morinville) in a case they brought against the USPTO in the U.S. District Court for the District of Columbia. Hyatt’s name is one I have heard and read about countless times over my five decades of practice. I was vaguely aware that he was one of those inventors who had long-pending patent applications and seemed to be butting heads with the USPTO with some regularity. That said, I have never represented Hyatt and I have never been adverse to him, so I have no opinion whatsoever as to the merits of any of his inventions.

The filing I came across was a brief in support of a motion to compel discovery brought by the plaintiffs. As I came to understand the underlying lawsuit, filed in 2019, the plaintiffs are alleging that the USPTO was violating their rights under the Privacy Act, 5 U.S.C. §552a(e)(5), in connection with a USPTO programs called “Sensitive Application Warning System” (SAWS).

The See-Sawing Program Known as SAWS

As late as February 2026, the official USPTO website included an article which claimed that the SAWS program began in 1994 and was “retired” in 2015. It is said to have been a vehicle by which patent examiners could alert “leadership” when a patent might issue on a “sensitive matter” (whatever that might mean). Its purpose was to ensure that “only the highest quality patents are issued” and to ensure that applications that could potentially be of “special interest” (to whom? for what reason?) are properly issued or properly denied.

The so-called “retirement” of SAWS may well have been just a lengthy sabbatical. IPWatchdog Founder and CEO Gene Quinn has asserted that what he calls “SAWS II” was secretly instituted during the 2020s. See Gene Quinn, “Prosecution Laches Is Illegitimate—And Saws II Proves It,” IPWatchdog, Nov. 18, 2025.

In their complaint against the USPTO, Hyatt and Morinville allege, among other things, that under SAWS, applications can be flagged for various reasons, including the possibility of publicity; old effective filing dates with broad claims; the identity of the applicant; and even politically-charged subject matter. They also allege that applicants are not alerted that their applications have been flagged or the factual basis for the flagging; that there is no defined process to remove a SAWS flag; and that while an application is flagged, a patent cannot issue. The plaintiffs also contend that notwithstanding the USPTO’s assertion that SAWS had been “retired” in 2015, it has been “resurrected.”

At the heart of the present discovery dispute, as reflected in the February 11 filing, is the Plaintiffs’ contention that discovery is needed because the USPTO has done nothing more than issue “an invitation to the Court to force the Plaintiffs to take the [USPTO’s] representation on faith about whether it restarted the SAWS program.”

Flagging Started Well Before SAWS

Long before Gilbert Hyatt’s current struggles with the USPTO, there was my client Gordon Gould, a recognized laser pioneer. (Disclosure: The author represented Gordon Gould in USPTO and federal court proceedings in the 1980s). Gould had filed an omnibus patent application in 1959, which disclosed and which would ultimately result in patents on at least four foundational laser-related inventions.

But that didn’t happen overnight. He first had to work through five interferences against the likes of Bell Labs, Westinghouse and Hughes Aircraft. It was not until the late 1970s that Gould received patents on two major commercially significant inventions.

By then, there were major laser manufacturers and users who suddenly found that they were infringers.  And they weren’t bashful about what they thought about the USPTO for having issued those patents, and the prospect of more Gould patents in the pipeline.

By 1980, Gould’s application directed to gas discharge laser amplifiers had been rejected by a patent examiner and what was then the Board of Appeals. Gould opted to seek judicial review in a civil action he brought under 35 U.S.C. §145 in the U.S. District Court for the District of Columbia.

Early in the litigation, Gould had filed a routine motion for an extension of time. The USPTO responded to that motion stating that this case may involve more than the ordinary civil action under Section 145, such that the USPTO had consulted with the Department of Justice concerning “additional Government interests in this case which may require handling of this case in a manner different from long standing practice,” i.e. handling of Section 145 cases by the Office of the USPTO Solicitor.

In light of that revelation, Gould filed a motion for leave to amend his complaint. He sought to allege that the USPTO had treated Gould’s application in a different fashion than it treats other applications in the ordinary course of examination, such that the decisions of the Examiner and the Board were not entitled to a presumption of administrative correctness. The court granted that motion. Gould v. Mossinghoff, 32 Fed. R. Serv. 2d 1384 (D.D.C. 1981).

(The USPTO later obtained summary judgment of collateral estoppel based on interferences Gould had lost; the D.C. Circuit reversed; after a bench trial, Gould prevailed; and the USPTO appealed to the Federal Circuit and lost. Gould’s U.S. Patent No. 4,704,583, directed to gas discharge laser amplifiers, finally issued in 1987, some 28 years after his original filing date).

Flagging Is Just Plain Wrong

 While I again wish to make clear that I know nothing about the merits of the Hyatt and Morinville patent applications, I wish them well in exposing and hopefully ending USPTO flagging of the type apparently experienced by Gordon Gould and institutionalized by the SAWS program.

Why might applications filed by inventors like Hyatt and Gould be flagged? Because these inventors might actually have the temerity to assert their patents and demand compensation for the use of their inventions?

Should patents that have been pending for a long time be considered suspect, flagged and delayed even further? Should patent applications be deemed too sensitive for normal examination because they have broad claims (which is not surprising, since they antedate much of the prior art that later filers must distinguish in their claims)?

USPTO’s Examination of Patent Applications Is Not Merely Optional

Since 1952, Section 131 of the Patent Code has made the USPTO’s obligations quite clear: “The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.” (Emphasis added.)

The law is equally clear about what must happen if a substantive examination reveals reason why a patent should not issue. Section 132 states that if any claim is subject to rejection or objection, the Director shall notify the applicant, stating the reasons. And if the applicant persists, with or without an amendment, the application shall be reexamined.

This statutory scheme stands in stark contrast to what currently seems to govern Inter Partes Review by the USPTO. There, 35 U.S.C. §314 has been viewed as providing the Director with essentially unbridled discretion to deny a challenger’s petition. But the USPTO has no similar discretion to flag and indefinitely shelve pending patent applications because someone views them as being of “special interest.”

I am not so pollyannish as to believe that patent examiners can or will ignore what they know or hear about a given inventor or his or her application. And such prejudices may well influence their actions. But they must be required to take on-the-record action in all applications.  We have administrative and judicial appellate bodies to correct wrong decisions based on evidence. Anyone who pays a filing fee is entitled, at a bare minimum, to substantive action on his or her application, on the merits, for better or for worse.

Editor’s note; This article was updated on February 26 to delete an inaccuracy relating to pre-GATT applications and later continuations. 

Image Source: Deposit Photos
Image ID: 99653136
Image Author: quarta