With Kathi Vidal now confirmed as the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), IPWatchdog reached out to stakeholders for their take on what she should prioritize on her first days in office. As you might imagine, the responses varied widely, from taking quick action on policy-side issues to spending some time just listening to her staff.
Vidal is only the second woman to serve as a Senate-confirmed Director of the USPTO and she has been a leader on diversity initiatives. Many are looking forward to her unique perspective, particularly at a time when Congress has been calling on the USPTO to improve its representation for women and minorities in patenting. Teresa Stanek-Rea, who served as Deputy Director and then Acting Director of the USPTO from 2011 to 2013, said “it is [Vidal’s] energy and enthusiasm that really sets her apart. We all know that she is an esteemed member of the IP community, but I also believe that as a female her focus and common-sense approach will make her a stellar leader.”
Below are all of the responses we have received so far about what Vidal should focus on first.
Alden Abbott, Mercatus Center; Former General Counsel, Federal Trade Commission
On the policy front, she should evaluate the draft DOJ-NIST-PTO policy guidance on SEP licensing agreements. In light of critical commentary on the appropriateness of the draft, I would hope that she would work to have the draft withdrawn (presumably behind the scenes), on the grounds that it could inappropriately undermine patent rights and discourage potentially welfare-enhancing licensing arrangements.
Tracy-Gene Durkin, Sterne Kessler, Goldstein & Fox
Drew Hirshfeld has done an excellent job for the past 16 months, but there are many important policy issues that are outstanding. One such issue is the interpretation of the article of manufacture requirement in section 171 of Title 35 of the United States Code and whether it should be revised to protect digital designs that encompass new and emerging technologies. The Office solicited public comments in December 2020 but has yet to provide any substantive commentary on this issue since. We look forward to the new agency director addressing this and other outstanding policy reviews that impact industry and innovation. There is a lot for Director Vidal to tackle, and we’re confident great progress will be made with the depth of experience and leadership she brings to the Office.
Jeff Hardin, Inventor
I congratulate Kathi Vidal on her Senate confirmation as Undersecretary of Commerce for Intellectual Property and Director of the USPTO. Her execution of, and influence on, IP policy will be long felt by the inventor community, and as others have noted, Vidal’s background presents great diversity opportunities. Inventors desire a strong patent system with Vidal at the helm, and after years of having their voice ignored, listening to and helping inventors should be top priority.
For example, in the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act, the USPTO reported to Congress that women and minorities are underrepresented participants. Not provided in that report is the fact that over 75% of the underrepresented inventor-stakeholders expressed that post-grant enforcement concerns are a barrier to participating in today’s patent system.
In the Council for Inclusive Innovation (CI2), a national strategy is directed to increase underrepresented participation in our innovation ecosystem. Essential to that strategy should be a two-pronged approach that not only corrects lack of access, but also remedies post-grant invalidation risks, the latter problem being something underrepresented inventors have actually identified and asked.
And in the Inventor Diversity for Economic Advancement (IDEA) Act of 2021, Congress members seek to increase patent diversity by collecting demographic information from inventors on patent applications. However, data from inventors who elect to not apply for a patent in the first place due to PTAB invalidation risks will not be collected—a “missing data” problem even acknowledged by the Patent Public Advisory Committee (PPAC).
I look forward to Director Vidal engaging with the inventor community and prioritizing their expressed concerns.
Blair Jacobs, McKool Smith
Under the prior administration, the Patent Office took active steps to strengthen patent rights, including making it more difficult to challenge patents at the Patent Trial and Appeal Board. Director Vidal will have to decide very early on whether to keep these policies in place.
The priorities of the new Director should be to immediately begin work on creating a balanced system that encourages innovation across industry sectors and all inventors and would-be inventors, from individual inventors and startups to medium-sized companies to large entities, and from every demographic sector.
As far as concrete substantive priorities, the Supreme Court’s United States v. Arthrex decision gives the Director the power to overturn PTAB inter partes review decisions. The Director will formalize the Director review process through a process that hopefully promotes trust in the system.
Patent eligibility is another area requiring harmonization. The new Director should review and update as appropriate guidance on Section 101 patent eligibility based on the results of the USPTO study Senators Tillis, Hirono, Cotton and Coons requested on the current state of patent eligibility jurisprudence in the United States and on how that jurisprudence has impacted investment and innovation. The unpredictability of eligibility determinations is a significant deterrent of enforceability and has tipped the balance in a manner favoring Big Tech. The balance needs to be restored.
We need to ensure fair protection and enforceability of IP in the U.S. and across the globe. The new Director should work on creating a balanced incentive structure across all stakeholders. Strong and balanced intellectual property rights are the bedrock of our economy; restoring balance should be the Director’s priority on day one.
Stephen Kunin, Maier & Maier
Director Vidal’s top priorities should be to:
- Review the activities of the PTAB raising public and Congressional concerns re discretionary institution denials, Director review of PTAB decisions following recent developments in Arthrex challenges and follow on or concurrent AIA trial petitions.
- Continual revision of patent eligibility guidance for subject matter eligibility based on recent Federal Circuit cases where the Alice–Mayo test has been expanded to address section 103 and 112 withing the framework of section 101.
- Consider revisions to the AIA that would add more President-appointed, Senate-confirmed positions under the Director to address Arthrex issues.
Scott McKeown, Ropes & Gray
The immediate elephant in the room is the PTAB’s acceptance of AIA trial petitions from organizations like Open Sky. That is, entities that exist solely to pick up and refile discretionarily denied petitions of others to harass patent owners for financial gain. Recent attorney correspondence in these proceedings — publicized by IPWatchdog — makes the gamesmanship crystal clear. This is a significant black eye for the agency. As such. I expect the rehearing in those cases (pending) to be taken up by the Precedential Opinion Panel imminently, and controls put in place to thwart this business model going forward.
Beau Phillips, US*MADE Executive Director
Patent troll lawsuits rose again in 2021, with more than half of all patent lawsuits targeting U.S. manufacturers who are creating American jobs, adding to U.S. GDP, and helping to drive the economy. These trolls were emboldened when the USPTO unilaterally implemented the NHK-Fintiv rule, which protects poor-quality patents by giving the Patent Trial and Appeal Board undue power to issue discretionary denials of requests for reviews of patents that likely should have never been granted. American manufacturers are counting on Ms. Vidal to curb abusive patent litigation and disarm patent trolls by ensuring legal access to the post-grant review process.
Randall Rader, The Rader Group; Former Federal Circuit Chief Judge
Director Vidal might grasp the wisdom of continuing to rescue U.S. innovation policy from a decade of decline. Director Vidal might pursue that goal by building on the work begun by her predecessor, Director Iancu. Thus, Director Vidal might invite patent prosecution policies to move away from years of following an over-stringent application of patent eligibility practices. After all, she might acknowledge, overly aggressive U.S. patent eligibility rules are not in sync with international standards for patentability. Director Vidal might also invite the PTAB to remain within its original role of acting as a helping surrogate for the courts. Where the courts do not need or seek administrative assistance, the PTAB should exercise its discretion to decline to intervene. Finally, Director Vidal might reassert the leadership of the USPTO as the nation’s advocate for innovation without deferring to competition or trade or other distractions from the exhortation in the Constitution to “promote the progress of science and useful arts.”
Russ Slifer, Black Hills IP; Former Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
I would like to offer my sincere congratulations to both Director Kathy Vidal on her confirmation and Commissioner Drew Hirshfeld on his skillful management of the USPTO over the last 14 months. The USPTO is a large, complex agency that can take months, if not years, to understand in the best of times. With the office just starting to return from the pandemic, that learning curve will be lengthened.
While it would be easy to set forth a wish list of priorities for Director Vidal, I am sure she has been cultivating her own list during the confirmation process. There are clearly many areas where strong leadership can improve our IP system. The obvious list includes patent eligibility and PTAB improvements. On some issues, the White House and Department of Commerce have already charted an IP policy path that will be difficult to navigate.
My recommendation to the new Director, however, is to focus her first months on listening and learning. Listen to all stakeholders. That includes all the great employees of the USPTO and their unions. Build a personal advisory council of former Directors and Deputy Directors to help in the transition. It is important to remember that as a political appointee the Director is blessed with the responsibility to leave the USPTO and our IP system in better condition. I wish Director Vidal the best in guiding the USPTO.
Jonathan Stroud, Unified Patents
Director Nominee Vidal will soon be sworn in, and not a moment too soon. With the stroke of a pen, she can end the unauthorized, unpopular Fintiv-NHK practice and undo almost three years of wasted resources and uncertainty at the Board. She will also be in a position to strongly influence SEP policy in the Biden Administration—here’s to hoping she can resist the crush of lobbyists and former officials who are, I am sure, already working to persuade her the sky is falling.
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6 comments so far.
AnonApril 9, 2022 04:32 pm
Not only have you nailed it – but the situation as you described is directly traceable to the voice$$ of Efficient Infringers and their deliberate attempts to denigrate innovation protection.
While Stroud complains about Fintiv-NHK, he works for an organization whose business model depends on the Efficient Infringer environment.
mikeApril 9, 2022 01:06 am
“Ask anyone from lit funders to small inventors to frequent defendants, certainty is at the top”
How about this for certainty—the only institution in the United States that does not give the USPTO credit for its work is the USPTO. If a granted patent by the USPTO is not even presumed valid by the USPTO, then what is it that they are actually issuing?
Investors, Inventors, and society would all benefit with a patent that can be trusted when it is issued. That’s the bottom line. If all of the USPTO efforts are not focused on the agency issuing patents as trusted legal instruments having sound property rights—enough so that the USPTO would defend their own work rather than not presume it as valid post grant— then resources are not being allocated in the right place.
This whole AIA has been a sham, and Congress needs to realize their mistake of buying into the “patent troll” hype, and they need to fix their blunder. In fact, Judge O’Malley just stated today that SCOTUS bought the hype and fell for that very thing.
If the USPTO issuing “bad patents” is the concern, the better solution is to tighten the examination process rather than create a post-grant tribunal that renders the patent instrument a useless liability. The former establishes trust and thus creates incentive, progressing the arts and sciences. The latter creates distrust and keeps ideas that should be made public to society under the mattress.
Jonathan R StroudApril 8, 2022 12:36 pm
It’s definitely not an improvement. I agree with Josh here, it’s just random. It has mostly benefitted Fortress IP (and Irell) in big-ticket litigations, but even that can’t be relied on by the patent marketplace. Ask anyone from lit funders to small inventors to frequent defendants, certainty is at the top, and they can’t rely on it being applied or not. An ultra vires procedural hoop that has been inconsistently applied for three years doesn’t make a lot of sense, unless your goal is to make the PTAB more expensive and more unpredictable than before.
Pro SayApril 7, 2022 10:12 am
That’s true Josh. But — because it often gives beleaguered inventors / patent owners another opportunity to protect their innovations against the onslaught of infringers — it’s at least an improvement over how things were prior to Fintiv.
If and until the full loaf is returned to our pantry (which you and I are among the many fighting for), half a loaf can help to stave off hunger.
Josh MaloneApril 6, 2022 08:33 pm
Pro say, Fintiv doesn’t add any certainty. The analysis is nearly random.
Pro SayApril 6, 2022 08:26 pm
Last . . . and yes, least . . .
To no one’s surprise, we get this from a leading member of the innovation-stealing cabal . . . operating from some other-wordly galaxy far, far away:
“With the stroke of a pen, she can end the unauthorized, unpopular Fintiv-NHK practice and undo almost three years of wasted resources and uncertainty at the Board.”
Earth to Stroud, Earth to Stroud . . .
With nary a pen in sight, she can continue popular Fintiv-NHK practice . . . maintaining almost three years of Congress-intended District Courts / PTAB certainty at the Board.