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Biden's PTO pick calls for clarity on patent-eligibility controversy

3 minute read

The United States Patent and Trademark Office in Alexandria, Virginia. REUTERS/Andrew Kelly

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  • But Winston & Strawn partner Kathi Vidal offered few details on how she would deal with patent eligibility issues
  • Says fix should come from top court or Congress

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(Reuters) - Winston & Strawn partner Kathi Vidal said in a Wednesday hearing before the Senate Judiciary Committee that she would focus on "strengthening the value of IP" if confirmed to head the U.S. Patent and Trademark Office, and addressed questions about divisive issues such as patent eligibility and PTO patent-challenge procedures from senators on both sides of the aisle.

"We can work together to build an intellectual property system that is more predictable, reliable and transparent," Vidal said.

Patent attorneys have said Vidal, who leads Winston & Strawn's Silicon Valley office, is "eminently qualified" and a "safe pick" for the role. She has extensive experience as a patent litigator, and has represented companies including Microsoft Corp, Tesla Inc, Intel Corp, Dell Corp and Spotify Technologies SA.

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Senators expressed concerns during the hearing about uncertainty from recent court cases around which inventions may be patented. Republican Senator Thom Tillis of North Carolina said patent-eligibility law was in "a shambles," and Democratic Senator Chris Coons of Delaware said it required legislative action.

Vidal said eligibility is "always deserving of attention because the law is not set," and that she would ensure that any PTO guidelines are "consistent with the law" and "promoting innovation."

She also said that there needed to be "more clarity when it comes to patent eligibility," whether it "comes via legislation or whether the Supreme Court takes a case."

A potential landmark case on the issue is currently pending at the U.S. Supreme Court.

Senators also asked how Vidal would address the PTO's Patent Trial and Appeal Board decisions on which cases to take up.

Andrei Iancu, the PTO director under former President Donald Trump, reformed the PTAB in ways that reduced the number of patents the board invalidated. Democratic Senator Patrick Leahy of Vermont introduced a bill in September that would undo some of Iancu's changes, to facilitate more eligibility challenges at the PTAB.

Tillis, however, told Vidal during the hearing that he was a "big supporter" of Iancu's changes, which he said ensured that the board was no longer a "death squad" for patent owners, and that his vote on her nomination would in part be "contingent on continuing these policies."

Vidal noted her experience on "both sides" of PTAB proceedings, and said she would consult with stakeholders and look into potential reforms.

Read more:

Biden nominates Winston & Strawn partner Kathi Vidal to lead USPTO

Senators Leahy, Cornyn introduce bill to 'restore' PTAB review process

Case to Watch: Supreme Court could clarify patent law that 'bitterly divided' Fed. Circuit

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Our Standards: The Thomson Reuters Trust Principles.

Washington-based correspondent covering court cases, trends, and other developments in intellectual property law, including patents, trademarks, copyrights, and trade secrets. Previous experience at Bloomberg Law, Thomson Reuters Practical Law and work as an attorney.

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