“This nationwide workforce of more than 13,000 employees is one of the most talented and respected the world over, and I couldn’t be more thrilled to work with them to help bring more ideas to impact, including in key technologies and through inclusive innovation and entrepreneurship.” – Kathi Vidal
On Wednesday, April 13, Kathi Vidal was officially sworn in and began her role as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Chief Judge Kimberly Moore administered the oath of office, and Vidal now assumes her position at the helm of the agency and head of its 13,000 employees. She is the second woman to be confirmed by the Senate to the position.
“I am excited to join America’s innovation agency,” said Vidal, according to a USPTO press release. “This nationwide workforce of more than 13,000 employees is one of the most talented and respected the world over, and I couldn’t be more thrilled to work with them to help bring more ideas to impact, including in key technologies and through inclusive innovation and entrepreneurship.”
Vidal also thanked Drew Hirshfeld, who was Performing the Functions and Duties of Under Secretary of Commerce for Intellectual Property and Director of the USPTO since January 20, 2021. Hirshfeld announced last week that he plans to leave government service this summer, but he will serve as acting Deputy Director until a political Deputy Director is named.
IP stakeholders last week weighed in on what should top Vidal’s to do list. These included fixing outstanding issues following the Supreme Court’s ruling in Arthrex v. Smith & Nephew; updating former Director Andrei Iancu’s guidance on patent eligibility; and curbing gamesmanship at the PTAB.
In her responses to Senator Thom Tillis’ (R-NC) questions for the record during her confirmation process, Vidal said she would review stakeholder feedback on PTAB that was solicited under Iancu “to determine if prior policies strike the right balance and whether more is needed.”
As for Iancu’s broadly popular guidance on Section 101 for examiners, in response to Tillis’ question asking whether she supports the guidance, Vidal said: “Given the uncertainty in the law, USPTO examination guidance was and is necessary to optimize consistent decision-making across art units and examiners. I support the principle of such guidance.” And during her hearing in the Senate Judiciary Committee, as well as in her written responses, Vidal acknowledged that today’s jurisprudence on patent eligibility “provides neither clarity nor consistency,” and implied that the current examiner guidance is presently consistent with the law.
Addressing complaints about serial filings by Big Tech companies, Vidal said “[t]he latter is somewhat ameliorated by the PTAB’s ability to exercise its discretion under General Plastic Co., Ltd. V. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (precedential), to prevent the filing of multiple challenges against the same patent,” and also pointed to the Office’s fee discounts for small and micro entities for patent examination and maintenance, as well as for PTAB appeals, including the USPTO’s pro bono program for patent prosecution and pilot for PTAB appeals.
Vidal most recently served as a patent litigator and managing partner of the Silicon Valley office of Winston & Strawn. Prior to that, she was with Fish & Richardson for 20 years, serving as Global Head of Litigation, and also sat on the firm’s Management Committee. She has represented high-tech, medical device, consumer product, and financial companies. She was part of the team that represented The Chamberlain Group in its fight at the Federal Circuit and subsequent petition to the Supreme Court to get its patent for a garage door opener recognized as patent eligible. She also argued and won the SAP America, Inc. v. InvestPic case for SAP at the Federal Circuit, in which the court held that InvestPic’s patent claims at issue were patent ineligible as abstract because “[t]heir subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations.” Thus, her positions as an attorney while advocating for clients are on both sides of the patent eligibility issue.
Vidal has been a leader on diversity efforts throughout her career and has indicated she will work to enhance diversity programs at the USPTO. In her first director’s message yesterday, she said she plans to spend her first few months engaging with and listening to stakeholders: “I want to hear from creators, inventors, entrepreneurs, and all those with big dreams from every walk of life, in every state and region—especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy.”