Industry Reacts to Kathi Vidal Nomination

By Eileen McDermott
October 27, 2021

Kathi Vidal

Kathi Vidal

Following yesterday’s announcement of Kathi Vidal as President Joe Biden’s nominee to head the U.S. Patent and Trademark Office (USPTO), IP professionals largely expressed their congratulations and support based on her strong credentials. However, many acknowledged the hard road she has ahead of her—first before the Senate Judiciary Committee and, once confirmed, tackling the many challenges facing the USPTO. Here is what some stakeholders had to say about her nomination.

Aziz Burgy, Axinn

The nomination of Kathi Vidal as Director of the United Patent and Trademark Office (USPTO) allows the agency to finally fill the vacancy left by Andrei Iancu. If confirmed, Vidal will inherit a USPTO grappling with several patent issues including, among other things, patent eligibility, director review following Arthrex Inc. v. Smith & Nephew, Inc., and discretionary denial of petitions. She undoubtedly has the qualifications to lead the agency going forward, but many stakeholders will be curious to see whether her leadership will result in a patentee or challenger-friendly regime.

Julie Burke, IP Quality Pro LLC

I would like to congratulate Ms. Vidal on her nomination as head of the USPTO. Now more than ever, changes are needed to address challenges faced by the American inventive spirit. Clara Barton, the Patent Office’s first famed female employee, once said the door that nobody else will go in at, seems always to swing open widely for me. I hope the USPTO opens the door even more widely for Ms. Vidal than it did for Clara Barton. Alexander Graham Bell’s advice seems pertinent. Before anything else, preparation is the key to success. As Ms. Vidal embarks on this voyage, I’d offer her the following specifics intended to help smoothly navigate challenging waters:

  • Begin by seeking a deep understanding of the USPTO’s inner workings.
  • Know the ropes: Take the time to learn how the USPTO really does things.
  • While you may be eager to make up leeway, note that lasting change happens slowly within this environment.
  • By and large, it may be difficult to gain the cooperation of all hands on deck.
  • As you get underway, know your time at the helm may pass quickly.

While it may not be possible to turn the Good Ship USPTO around on a dime, I believe Ms. Vidal can start to get America’s patent process back on course and accomplish lasting change to promote the progress of science and the useful arts.

Liren Chen, InterDigital

As a former engineer, litigator, and manager in one of the U.S.’s largest law firms, we welcome Kathi Vidal’s breadth of experience as the foundation for what any nominee for Director of the USPTO needs to be successful. At a time when so much work is being done to increase diversity in the patent system, we also welcome the fact that, if confirmed, she would be only the second woman to head the PTO in a permanent capacity. We look forward to working with Ms. Vidal on many of the challenges currently facing the U.S. patent system and in ensuring that this Administration gives its full support to America’s innovation economy.

Dennis Crouch, Patently O

Great choice of a dynamic, proven leader who has been working to improve the patent system for decades.

 

 

Marla Grossman, The American Continental Group, Inc. 

I am pleased that President Biden has nominated someone with Kathi Vidal’s impressive background. She has broad experience with patent litigation and PTAB proceedings, excellent management credentials, and a commitment to ensuring that the next generation of innovators are diverse – reflecting a variety of backgrounds, economic status, and regions. Given that the IP industries supported by the USPTO represent at least a third of total US GDP (according to the agency’s most recent study), it is critical that the USPTO hire additional examiners to reduce pendency and that it continues to secure its systems in the face of growing cybersecurity threats.  I know the patent community is eager for data quality to be a top priority throughout the entire application, examination, grant, and publication process. To that end, it is my hope that the Office will provide greater transparency with respect to the status of its modernization and automation projects and that it will improve its procurement processes to provide greater clarity and predictability to vendors who are critical to these efforts and the end users who pay for the Office’s operations via user fees.

Jeff Hardin, Inventor

I congratulate Kathi Vidal and am pleased with her nomination for USPTO Director. Her unparalleled background carries a particular fitness for today’s USPTO issues.

First, as previously pointed out in stakeholder comments, Biden’s agenda to root out “unequal barriers to opportunity” by “advancing equity for all” creates a unique opportunity at the USPTO. Inventors have specifically identified post-grant enforcement concerns as unequal barriers to participating in today’s U.S. patent system, and Ms. Vidal’s previous experience helping promote gender and racial diversity for underrepresented people in the legal profession could very well be expanded to the underrepresented inventor community in their quest to have the USPTO issue patents that they can trust post-grant.

Second, Ms. Vidal’s vast experience representing plaintiffs and defendants, both large and small, is a trait all can appreciate for this most respected position. With a decade of data revealing negative effects of the PTAB against small businesses, her pushing to bring balance at the PTAB would be a delight, as was sought by former leadership.

Finally, although many have given up on the courts correcting the judicially-created patent eligibility conundrum, Ms. Vidal’s recent firsthand experience with Section 101 should provide a catalyst to help Congress cross the finish line with clarity.

There are many pressing issues affecting the U.S. innovation economy that I’m confident Ms. Vidal can tackle, and I welcome a swift Senate confirmation and a solid bridge with inventors.

Stephen Kunin, Maier & Maier

Kathi is one of the most highly qualified candidates for the USPTO Director position that meets all the criteria the White House was looking for in a leader and advocate. Her skills, knowledge, experience and track record of success will make her a great fit for the USPTO. I expect that she will be the right person at the right time to advocate for strong IP rights both domestically and internationally taking into account the needs of big business, small and medium enterprises and individual inventors. She is a strong supporter of women and minorities as well as STEM.

Nicholas Matich, McKool Smith

The America Invents Act moved a lot of power from the courts to the USPTO, power that, after Arthrex, now rests primarily in the hands of the Director. This makes the President’s nomination for USPTO director more consequential than it might have been viewed to be in the past. Ms. Vidal will undoubtedly face a lot of questioning from the Judiciary Committee during her confirmation process and how she answers may hold clues for what direction she intends on taking the USPTO in the future. How does she intend on exercising the Director’s new Arthrex review authority? What changes (if any) would she like to see at the PTAB? What does she think about the state of subject matter eligibility? All questions that are likely to come up in her hearing.

Scott McKeownScott McKeown, Ropes & Gray

Selecting a litigator that plays both sides of the patent system is a way to appease the powerful lobbies on either side of the issue.  Of course, former Director Iancu fit that mold and proved to be quite pro-patent.  As such, the confirmation process here is likely to aggressively probe into Ms. Vidal’s opinions on PTAB discretionary denials, 101 jurisprudence, and what roles the PTAB should play in the patent system. Given that the former administration’s pro-patent changes to PTAB practice remain in force, albeit subject to litigation and pending legislation that will preclude many of them (i.e. Restoring the America Invents Act), the Director position may become more of a PTAB stewardship for the remainder of Biden’s term. That is, I would not expect the next Director to champion and significant changes to PTAB practice – one way or the other – given the current landscape. Of course, there are numerous agency issues outside of the PTAB that may require more of an activist approach, such as fraudulent trademark registrations, AI inventorship issues, and continued outreach to underserved communities. I suspect the next Director to focus on these types of issues.

Paul Michel, Chief Judge, US Court of Appeals for the Federal Circuit (Ret.)

Top IP litigator Kathi Vidal surely has excellent credentials, considerable maturity, some leadership experience and ample technical expertise. She displays superior intellect and vast energy to juggle many diverse tasks. Although she has no experience leading a large business or government organization, she may well make a fine Director. She has the necessary background to do so. But her challenge will be whether she can resist the inevitable political pressures from various quarters and lead free of any past allegiances. For the sake of our nation and its innovation economy, let’s hope she can—and does. I wish her well.

Thomas Moga, Dykema

It was my understanding that Ms. Vidal’s name had been mentioned recently at least inside the Beltway as a possible choice. As a member of the patent bar I believe her extensive litigation background coupled with her rich technical skill in electrical engineering and software design will prove truly valuable in guiding the USPTO through the challenges ahead. Particularly noteworthy is her broad variety of technical experience including her work in aeronautical electrical control systems. This deep and varied technical depth is hard to come by and I think the USPTO will be fortunate to have her at the tiller.

Russ Slifer, Black Hills IP; Schwegman, Lundberg & Woesner; and Former Deputy Director, USPTO

I wish Kathi Vidal the best in leading the USPTO. Heading an Agency of this size is far more difficult than most people realize. I know that the past Directors and Deputy Directors are available to help her in the transition following a confirmation. There is no question that the U.S. patent system has been under constant attack for the last decade and the USPTO examiners know that many people, including Senators, routinely criticize their work product as “poor quality.” I know from experience, however, that the Agency has thousands of skilled and dedicated employees who believe in the value of patents to promote U.S. innovation. They deserve a leader who passionately lives, breaths and demonstrates the same beliefs.

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. Night Writer October 27, 2021 1:01 pm

    My bet: in one year we will see her as harder on patents than Lee and that most new initiatives are anti-patent. Also, given her lack of prosecution experience, which is the primary job of 90 percent of the people at the PTO, I’d say the odds of her improving prosecution are nearly ZERO.

    The important thing here is what did she agree to do in order to be appointed? She is an executive appointment which means she is supposed to be carrying out the directives of the President.

    So, was she told to defend patents or attack patents? My bet is the latter.

    Let’s see some of you make a prediction.

  2. Greg DeLassus October 27, 2021 1:51 pm

    Once again, I see that I have been passed over. No doubt, the office is going to a worthier candidate, but at what opportunity cost? Ms. Vidal seems like a genuinely clever and talented person, so if she were not leading the USPTO, she could be doing something even more socially worthwhile. I, on the other hand, am no more than barely capable of leading an organization like the USPTO, so you know that appointing me to this office would come at no opportunity cost whatever.

    Well, even if it was a shameful mistake not to appoint me this time, I know that you cannot keep a talent like Vidal’s down for long. She will likely leave office before Pres Biden does. Allow me to start early on lobbying for the job next time it opens up.

    If appointed and confirmed, I promise to:

    (1) Enact regulations requiring that all claims be presented to the examiner in Jepson format.

    (2) Enlist economic modeling to calculate the revenue maximizing rate for all PTO fees, and raise (or lower) fees to those rates.

    (3) Revise the MPEP to require that a prima facie obviousness rejection must identify—with specificity—who is the PHOSitA (ocupation, education, years professional experience, etc) and a practical specific example of the allegedly obvious combination of prior art elements that this person would plausibly make.

    (4) Appoint myself to an expanded PTAB panel to author a precedential opinion holding that a rejection that does not come up to the standard in #3 above must be overturned on appeal.

    (5) Enact regulations requiring that substitute claims in an IPR or PGR must be introduced—if at all—in the patent owner response to the petition. At that point, those amendments will be entered as by right unless the petitioner proves them unpatentable or non-compliant with §112.

    Come on, Joe. Give me the nod, next time. I promise that I will (just barely) do you proud.

  3. Anon October 27, 2021 3:39 pm

    The important thing here is what did she agree to do in order to be appointed?

    Completely agree.

    Her resume points her out as capable and diligent, no matter who the ‘master’ may be.

    In that regard, I predict that she will capably carry out whatever agenda she has been assigned. What that means (in regards to “boots on the ground”) will tell everyone just what that agenda was.

  4. Anon October 27, 2021 3:47 pm

    As to Mr. DeLassus,

    (1) is most odd, and clearly disconnected from reality that shows that the optional claim format is simply disfavored. As there is no showing of any relation of the (rare) use of the claim format with any notion of “better quality” (no matter how one may want to stretch or define that term), one may wonder why this is the stalking horse of this person’s efforts.

    (2) this should already be the case, and I have long put forth that the budget process should be brought out squarely into the sunshine.

    (3) I agree with this proposition

    (4) Enforcement of (3) should need not rise to this level, but I can ‘agree’ in Ends while reserving judgment on the Means.

    (5) I do not agree with this. As has been recently emphasized, the post grant review mechanisms are not examination, and the Office is simply not the proper branch of the government to fix the (fatal?) flaw of the AIA in the regard of amendments that may be then turned into granted claims without proper examination. Further, “proving” patentable – or even compliant with 112 is an examiner’s role, not the role of EITHER of the two contesting parties in a post grant situation.

  5. James Stavoe October 27, 2021 4:01 pm

    It seems the USPTO is more about lawyers than inventors. How many patents does Ms. Vidal hold? How many successful inventions does she depend on for income?

    Why doesn’t the USPTO take inventors more into account during their decision making process?

  6. Anon October 27, 2021 5:43 pm

    Mr. Stavoe,

    Perhaps you simply are not aware of the roles involved. The patent office itself has no role for inventors per se, but instead their role is to evaluate what those OTHER inventors do to the precepts of the law.

    Actual inventing (and the further step of making a business therefrom) are thus non sequiturs to the actual role at hand.

  7. Moderate Centrist Independent October 27, 2021 6:00 pm

    @1
    My prediction is that you will have lost that bet and once again shown yourself to be unable to acknowledge how wrong you were.

  8. Pro Say October 27, 2021 8:11 pm

    What Jeff Hardin said.

    Just as the founders of our country realized:

    Pro-Patents . . . is Pro-Innovation . . . is Pro-America.

    The best way forward for her? Simply follow in the principled, innovation-supporting foot steps of her immediate predecessor — Andrei Iancu.

    Indeed, I’m certain that Andrei will make himself readily available for when wise, experienced counsel is desired.

  9. Mark Summerfield October 28, 2021 5:11 am

    To Greg @2, Thanks for the laugh! If I understand your platform correctly, you are proposing to turn the USPTO into the EPO. I have heard worse ideas, and MaxDrei will be delighted, I’m sure.

  10. Greg DeLassus October 28, 2021 11:41 am

    Thanks for the laugh!

    I am glad that you received it in the spirit in which I meant it. Some folks do not know how to take a joke.

    If I understand your platform correctly, you are proposing to turn the USPTO into the EPO.

    I suppose that is about the shape of my proposal.

  11. Greg DeLassus October 28, 2021 1:31 pm

    Incidentally, I cannot prove this, but I suspect that the EPO’s fees are not set at the revenue maximizing level. I expect that the EPO would see more filings if they lower certain fees (especially annuities), and that the extra volume would make up the lower prices. I also suspect that the EPO deliberately sets prices on the right hand side of the Laffer curve, to disincentivize filings from outside the EP.

  12. MaxDrei October 28, 2021 1:42 pm

    Thanks, Mark and Greg. On another blog I responded to a nice Greg quote from the 1976 Sakraida case with a comment that perhaps the EPO’s TSM way with obviousness was actually inspired from such cases and 1970’s thinking in the USA.

    What would give me pleasure is to see TSM return to the USA, reinvigorated by the overhaul it has been given by 40 years of solid and ever more robust, fair, predictable and consistent obviousness jurisprudence at the EPO.

    As an international patent litigator, Ms Vidal is presumably very familiar with how obviousness is adjudicated in First to File jurisdictions outside the USA. Will she bring to the USPTO insights from all those years of litigating patents? You bet.

  13. Night Writer October 28, 2021 3:19 pm

    @10 Greg

    Actually, I think your post is great. I wish people would focus on issues rather than politics.