The Biden administration tapped Winston & Strawn partner Kathi Vidal to serve as director of the U.S. Patent and Trademark Office.
Vidal, if confirmed, would follow the legacy of Trump administration nominee Andrei Iancu, an Irell & Manella attorney who left a notable mark on the agency during his tenure.
Iancu pushed for patent eligibility reform and spearheaded significant changes to the agency’s Patent Trial and Appeal Board, including the formation of an agency leadership panel to set rules for the board’s disputes.
Vidal would enter office following years as a litigator navigating leading venues for patent disputes like the U.S. Court of Appeals for the Federal Circuit, International Trade Commission, and PTO’s Patent Trial and Appeal Board.
PTO Commissioner for Patents Drew Hirshfeld is performing the duties of the director until the role is filled.
Patent, Trademark Policies
Under Iancu during the Trump administration, the patent office took various measures to strengthen patent rights, including making it more difficult to challenge patents at the Patent Trial and Appeal Board. The new director will decide whether to keep those policies in place.
The patent office also continues to navigate patent eligibility law, an area that many complain is in disarray. Earlier this year, the agency began collecting public input as part of a study on how the law has impacted artificial intelligence, pharmaceutical treatments, and other innovations.
Vidal would bring to the agency her own experience with patent eligibility. That includes having argued and prevailed in SAP America v. InvestPic before the Federal Circuit, resulting in a precedential decision finding that abstract ideas aren’t eligible for patent protections even if they’re innovative.
The U.S. Supreme Court raised the stakes for the nomination with its June decision in United States v. Arthrex, which gave the patent office director the power to overturn PTAB decisions in inter partes review. The decision presents the director with a new avenue to wield power.
Vidal would also take over as the agency implements a new fast lane for canceling trademarks. The system was created by a law that passed in December 2020 and was in large part designed to weed out unused marks from China, which exploded in recent years.
That law created an accelerated process for challenging registered trademarks that allegedly had never been used, as is required for registration. It also would codify existing proceedings for alleging an applicant’s non-use before registration.
Vidal is currently managing partner at Winston’s Silicon Valley office. She was previously an electrical engineer.
—With assistance from Matthew Bultman.