Vidal Eyes AI Litigation, Policy After Leading Patent Office

Kathi Vidal says her time leading the US Patent & Trademark Office, where she helped lay the groundwork for the IP agency’s approach to artificial intelligence, has set her up to advise clients on the technology’s thorniest legal questions as she re-enters private practice.

Less than a month after departing the patent office, Vidal is back at work at Winston & Strawn LLP, where, she told Bloomberg Law, she’s working on an amicus brief in a case involving AI and copyright law. She’s also on the firm’s AI committee where she’ll help chart its AI strategy guiding technology adoption for nearly 1,000 attorneys worldwide.

The role marks a shift from her government post as director of the PTO to the front lines of private practice, where law firms are racing to harness AI. Under her leadership, the PTO issued its first guidance on when AI-assisted inventions qualify for patents and launched initiatives to explore how emerging technologies affect intellectual property rights. The agency also tackled concerns about AI creating a flood of content that could block future patents and examined how practitioners could use AI tools to aid their patent applications while avoiding misleading and potentially erroneous case citations.

Now she’s navigating those issues to guide companies through the regulatory uncertainty she managed as a policymaker. And part of her job supporting AI-related litigation and AI guardrails will include “extensively” using AI tools, she said in an interview.

“I just need to jump in,” she said, “and roll up my sleeves and learn the different tools we have access to.” Like many attorneys testing AI’s capabilities, Vidal has experimented with tools, including LinkedIn Corp.'s AI features for social media posts, though she remains measured about adopting the technology’s suggestions.

She does have limits, beyond her work on AI.

If Vidal worked on individual matters “personally and substantially” at the PTO, she can’t ever work on those matters at Winston. For example, if she issued a director review decision that is appealed to the Federal Circuit, she can’t represent a party in that appeal, she said. While she can work with the companies involved, she can’t work on those specific matters.

Vidal also noted that she signed the Biden ethics pledge, which sets limits on how and when high ranking government appointees can re-engage with their former agencies.

“I will abide by all ethics restrictions,” she said in an email to Bloomberg Law on Jan. 15.

Rejoining Winston

Vidal was nominated to head the agency by President Joe Biden in October 2021 while a partner at Winston & Strawn’s Silicon Valley office, and confirmed by the Senate in April 2022.

As PTO director, she focused on gathering early feedback on AI and developing policy frameworks that future administrations could build on. Her goal, she said, was to create a foundation for AI policy without forcing the next administration to start from scratch.

Now back at Winston, she aims to apply that expertise so the firm can “adopt AI as rapidly as we can,” she said, while balancing adoption with client confidentiality.

While she experimented in the PTO’s “AI sandbox,” she refrained from using the technology for agency work due to data-protection concerns. Though large language models are “ripe at this stage to provide ideas,” she said, they’re still no replacement for an experienced lawyer.

AI is unlikely to understand what matters to a judge by analyzing hearing transcripts, she said, because a judge’s approach is “so multifaceted, it’s not just an answer.”

Vidal now helps clients navigate AI regulations and advises companies that receive government funding, including from the CHIPS and Science Act’s semiconductor manufacturing initiatives. The new role shifts her focus from national interests to clients’ concerns about the uncertain landscape of court decisions, regulations, and international developments, particularly in Europe.

AI Legacy

Even before OpenAI Inc. launched ChatGPT in November 2022, the PTO began positioning itself for the AI era. That April, the agency established an AI initiative to engage academics, inventors, industry leaders, and other government agencies about incentivizing and protecting AI innovations.

The office in February 2024 issued guidance outlining when an AI-assisted invention is eligible for patent protection, updating it with more examples in July 2024. The agency also responded to pharmaceutical companies’ concerns about AI’s impact on patent novelty and investment incentives in April 2024 with a request for comments.

Vidal issued guidance on practitioners’ use of AI at the agency and advocated for patent examiners to adopt AI tools by integrating them into patent examination workflows and exploring their adoption in trademark examination.

“We’re not looking for AI to replace people, we’re looking for AI to help people do their jobs better,” she told Bloomberg Law weeks before her final day as director.

Work begun under Vidal will be released in upcoming agency reports regarding AI-generated deepfakes, the copyrightability of AI outputs, and fair use. The PTO is scheduled to issue its deepfake report, in compliance with a Biden-era AI executive order, by the end of January, following the Copyright’s Office conclusion that Congress needs to pass a law protecting all individuals from the deliberate distribution of unauthorized deepfakes, Vidal said.

The PTO will also conclude that legislation is needed on deepfakes, she said, but the PTO’s “report is going to be much more nuanced, and it’s going to address what that might look like, and address all the stakeholder feedback we received, including the feedback we got from the Copyright Office.”

“Almost everything that we arced is getting across the finish line,” Vidal said, but we “primed the pump so that the next administration could then move forward with additional policy. We didn’t want them to have to start from scratch on a lot of these really important issues.”

The former director wouldn’t speak to the PTO under the incoming Trump administration, but said the agency has “a phenomenal AI team” that will continue its work because much of the staff are career employees, not political appointees.

“These are things that need to be solved,” Vidal said. “I don’t have any fear that that work is going to continue.”