Pending new USPTO director writes that she backs the notion of revised patent eligibility guidance

Regarding a direct question on Andrei Iancu’s examiner guidance, Kathi Vidal punted on addressing whether she actually supports it.


In written answers to senators’ questions for the record submitted by Kathi Vidal, President Joe Biden’s nominee for the next U.S. Patent and Trademark Office director, Vidal said she “support[s] the principle of” former USPTO Director Andrei Iancu’s 2019 Revised Patent Subject Matter Eligibility Guidance for examiners. But she stopped short of wholly endorsing the present guidance or committing to keeping it in place.

Instead, Vidal said she would review the guidance in light of intervening case law and comments on the USPTO’s study on the state of patent eligibility jurisprudence to determine whether updates are needed.

Only Sen. Thom Tillis (R-N.C.) asked Vidal directly about her approach to patent eligibility. The topic also came up in her response to Sen. Chuck Grassley’s (R-Iowa) query about which policies of the previous administration she would keep in place—to which she replied that she would continue reforms made “in patent strength, trademark registry integrity, transparency and inclusiveness.”

As part of that, Vidal said she would “also review and update as appropriate guidance on Section 101 (patent eligibility)” based on the results of a USPTO study some senators requested on the current state of patent eligibility jurisprudence in the United States.

Additionally, Vidal said she would review stakeholder feedback on the Patent Trial and Appeal Board solicited under Iancu “to determine if prior policies strike the right balance and whether more is needed.”

Avoiding the question?

But in her reply to Tillis’ more direct question on Iancu’s examiner guidance, Vidal punted on addressing whether she actually supports it.

Tillis asked: “As you know, the previous USPTO director issued examiner guidance related to patent eligibility. Do you support that guidance?”

Vidal replied: “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.”

During her recent hearing with 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. But her written responses raise a question whether her promises to review the guidance in light of intervening jurisprudence—which she admits is chaotic—might roll back some of the benefits Iancu’s changes brought for patent owners.

On the PTAB and Big Tech

All senators who submitted questions for the record asked Vidal about her plans for the PTAB. Vidal echoed the sentiment of other patent stakeholders who have commented on the topic that, with 10 years of data accumulated since PTAB proceedings were implemented, it may be time to review and potentially revise the procedures:

“For example, I know based on my experiences (representing both patentees and patent challengers), and through common knowledge, that there is a wide disparity in how different courts deal with the parallel proceedings issue (a patent being challenged simultaneously in both the USPTO and in another tribunal such as district court) and related issues.”

Sens. John Kennedy (R-La.) and Marsha Blackburn (R-Tenn.) each asked several questions related to the PTAB and the potential imbalances in the system that may favor Big Tech over small inventors. Kennedy asked whether Vidal agrees with the general proposition that the USPTO examination and PTAB processes favor Big Tech.

Vidal replied that, although litigation of any kind can disadvantage small entities, “the USPTO applies the same statutory requirements during patent examination and in PTAB adjudications for all, regardless of the size of the applicant, patent owner or petitioner.”

She also cited 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 soon-to-be pilot for PTAB appeals.

 As to concerns 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 to prevent the filing of multiple challenges against the same patent.”

In her reply to Blackburn’s question about whether she has represented Silicon Valley clients in patent matters, she said has had clients across the spectrum—from Fortune 100 and Silicon Valley companies to underrepresented individuals. 

She also noted in response to a question from Sen. Josh Hawley (R-Mo.) that she has never represented Facebook, Twitter, Apple, Google, or Amazon specifically while at Winston & Strawn.