“I would love obviously if Congress does something; it’s more permanent, they get a lot of feedback, I trust in that process. But until that happens, we have to run the agency and we have to run it as best we can.” – Kathi Vidal
Clarity, transparency and integrity were themes consistently referenced by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal during a lunchtime fireside chat with IPWatchdog Founder and CEO Gene Quinn on Day 3 of IPWatchdog LIVE 2023. Throughout the discussion, which ran the gamut from the agency’s current rulemaking to potential issues with emerging technologies, Director Vidal strongly encouraged public participation from stakeholders to improve the functioning of the nation’s patent and trademark-granting agency.
Vidal: ‘We Have to Run the Agency’ Until Congress Does Something More Permanent
The USPTO’s advanced notice of proposed rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) proceedings led the conversation between Quinn and Director Vidal. Vidal noted that many of the proposals included in the ANPRM were not suggested by the USPTO but rather came from ideas percolating outside of the Office. Public responses to the ANPRM will help inform which proposals the USPTO intends to move forward. Vidal indicated that the next steps would likely involve a post on the USPTO’s Director’s Blog informing the public of the proposals that will not move forward to the agency’s eventual notice of proposed rulemaking (NPRM). While Vidal indicated she couldn’t give further details on a rulemaking timetable, she acknowledged the agency’s awareness of the importance of implementing a rules package in the year or so left during the current Biden Administration.
Quinn, who was appreciative of Director Vidal’s actions on the ANPRM, credited her with pushing forward the ANPRM to collect public comments despite criticism from politicians on Capitol Hill. “I’m happy to take the heat,” Vidal responded, adding that she did wish that the USPTO had better described the purpose of the ANPRM to create dialogue with industry. She explained that the purpose of the ANPRM, along with collecting public comments, was to memorialize agency practices that had been working to address issues like serial petitions or page limits on discretionary denial briefings in the absence of clear direction from Congress.
“It’s my job to run the Office until we have something from Congress… I would love obviously if Congress does something; it’s more permanent, they get a lot of feedback, I trust in that process. But until that happens, we have to run the agency and we have to run it as best we can and make it as fair as we can to all the parties.”
Correcting the treatment of parties appearing before the PTAB is one of the factors informing Vidal’s Director review process, she explained. While Quinn remarked that it appeared many Director reviews were being granted sua sponte, Vidal indicated that review decisions were often made based on issues identified by administrative patent judge (APJ) panels at the PTAB, including those involving discretionary denials of PTAB petitions.
“With Fintiv, I had big issues with that when I got in because I thought, ‘How are you going to have consistency if you just throw a whole bunch of factors in a bowl and weigh them?’ And so I’m always thinking about how can we provide as much consistency and clarity and sanctity and make sure it’s a process you can trust in.”
While Vidal understood that many would like to see changes to PTAB processes, she urged members of the public to refrain from personal attacks on PTAB judges regardless of their thoughts of the impact of America Invents Act (AIA) trials on patent validity.
‘You Deserve a Leader Who’s Going to Have Integrity’ in Running the USPTO
On the topic of artificial intelligence, Director Vidal indicated that the USPTO was working to embrace AI responsibly as soon as possible. Although the Office wants to bring AI functionality to bear on improving the efficiency of patent examination processes, recent memos to examiners have informed them that ChatGPT use is prohibited for drafting office actions or other examination activities.
Court decisions around the world have made it clear that AI cannot currently be deemed an inventor on a granted patent, but Vidal said that the USPTO’s request for comments on AI inventorship issued this February would help the agency better determine the level of human contribution to AI-developed inventions that would allow the Office to grant a patent to the human inventor. “If we don’t strike the right balance there… we’re either going to be over-protecting, in which case there’s not going to be any room for other market players, it’s whoever files the most patents, or we’re going to be under-protecting and you’re not going to be able to get the investment that you need to bring ideas to reality,” Vidal said. Quantum was another area of concern for Vidal, who added that the security implications of quantum computing was an area of focus for her in conversations with the National Institute of Standards and Technology (NIST) and others within the federal government.
Throughout the conversation, Director Vidal acknowledged the need for the agency to remove the arbitrariness of policy changes implemented through agency decision-making. “I feel like that’s the most important thing is you deserve a leader who’s going to have integrity, who’s going to make decisions very openly, and who is going to apply due process when they put their judge’s hat on,” she said. She encouraged those with ideas on improving agency practices to email her directly through her official USPTO address. Although the USPTO’s focus would remain on those ideas that help the country as a whole instead of specific industries or parties, Vidal reiterated her commitment to incorporating public feedback into agency practices at multiple points during the fireside chat.