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The CEO Views > Blog > Magazine > ENTREPRENEUR VIEWS > Julie A. Katz: Protecting Client’s Intellectual Property Rights
ENTREPRENEUR VIEWS

Julie A. Katz: Protecting Client’s Intellectual Property Rights

The CEO Views
Last updated: 2024/02/22 at 3:11 AM
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Julie A. Katz
Julie A. Katz

Julie A. Katz, the founder of Katz Group is a multi-faceted professional with a deep understanding of IP law and enforcement strategies, backed by successful litigation outcomes on numerous high- profile infringement cases.

In 1990, Julie began her career as a licensed attorney at the law firm of Welsh & Katz, which specializes in intellectual property legal issues. 18 years later, as a shareholder of Welsh & Katz, the firm merged with a much larger law firm. As is common within large firms, Julie began running into conflicts of issues when she tried bringing new clients into her practice. She realized that the clients and the prospective clients needed her attention in new ways. After giving the merger a good college try, Julie decided to unfold a new chapter of life and thus began her journey as a solo practitioner.

A Winner’s Journey

Capturing the dream isn’t always an easy feat. The fear of not being able to attract clients was real. But having made excellent connections in various fields, including employment attorneys, vendors for billing, docketing, and web design over the years, made the initial set up smooth for Julie. In under than a couple of weeks, Julie was ready to roll up her sleeves and get to work with a fully functional website, and all the system processes that are needed to run her firm eciently.

The firm has completed over a decade now. The 10-year anniversary of the firm is a milestone, for which Julie is proud. The opportunity to represent clients in divergent industries and build relationships with attorneys and agents around the globe has always been her reward.

Julie Katz has over 30 years of experience in the field of litigating, licensing, and prosecuting intellectual property spanning various technologies, industries, and consumer markets.

Representing Clients In Divergent Industries

Some people say that focusing on a single industry is the best way to build a practice in intellectual property. For example, only working with craft beer manufacturing clients or only working with wine producing clients. While one chooses to make a name within a single industry by taking this road, Julie prefers the road that forks into many prongs. She shares, “Having clients in the toy, spirits, automotive, robotics, biologics, chemistry, clothing, jewellery, electronics, high-tech, and other dynamic and ever-evolving industries, allows me to continuously learn. Continuous learning is a gratifying aspect of the practice of law. I have heard that it is a great goal to learn some- thing new every day. This certainly keeps life interesting and one’s brain active.”

Areas Of Legal Practice

Julie Katz has over 30 years of experience in the field of litigating, licensing, and prosecuting intellectual property spanning various technologies, industries, and consumer markets. Her practice includes international IP portfolio management & consulting, trademark and copyright protection including licensing, trademark and copyright infringement litigation, trade dress protection, trade secret protection and litigation, alternative dispute resolution, US PTO Trademark Trial and Appeal Board proceedings, strategic branding & re-branding, IP Audits, domain name disputes, domain name acquisition, IP investigations, U.S. Customs.

Julie has extensive knowledge about protecting trademarks and copyrights through the US Customs and Border protection system designed to stop counterfeits and parallel imports from entering the US.

Approach To Success

Companies and entrepreneurs rely on Julie for their global IP protection and licensing and enforcement needs. With more than 30 years of global and domestic IP portfolio management and litigation and licensing experience, Julie focuses exclusively on identifying, defining, and maximizing her clients’ intellectual property value. She works with clients to develop enforcement proce-
dures and programs that accomplish defined goals. When opportunities arise to expand her clients’ IP rights, Julie negotiates and drafts licenses and other transaction- al agreements relating to IP assets.

On those occasions where an even more aggressive stance must be taken to enforce her clients’ IP rights, Julie brings her litigation experience to work for her clients. She works with clients to protect trade secrets through pre-emptive litigation strategies and copyright registration where appropriate.

In the area of contentious trademark disputes, Julie has won 100s of proceedings before the Trademark Trial and Appeal Board. She has also won many victories for trade- mark owners through ICANN’s domain name dispute resolution procedures.

Julie has extensive knowledge about protecting trademarks and copyrights through the US Customs and Border protection system designed to stop counterfeits and parallel imports from entering the US.

Making A Difference

Speaking about how she is making a difference being a women entrepreneur, Julie says, “I believe that my exposure and knowledge of a broad range of industries allows me to bring the critical thinking that is needed to any new client’s business. The diversity of industries with which I engage gives me insight that is not singular, but rather multi-dimensional when approaching a client’s business plan. In addition and just as important is the fact that after litigating intellectual property issues for over 30 years, my approach to any particular client matter is with an eye toward preventing potential conflicts to the extent possible under the circumstances. Clients tend to appreciate when pot holes can be avoided rather than falling into them. In the end, preventing or avoiding problems usually costs less than fighting to resolve them.”

Navigating Hurdles And Pushing The Limit

Companies have a tendency to choose large size law firms that are well-known and reputed. That is simply the nature of the business. This has been the biggest hurdle for Julie. Getting clients through the door was an undeniable challenge in the initial days. Moreover, clients were not ready to trust a solo practitioner and wondered how she is able to handle a complex intellectual property litigation that would usually engage a number of lawyers and para- professionals, as well as administrative sta. Julie’s answer is quite simple. She combines her forces with another firm’s.

Over the years, Julie has built deep connections with attorneys and paraprofessionals; and, when a litigation matter comes in, assuming that it is not a case that can be settled in a reasonable amount of time for the matter, she joins forces with the attorney best suited to the client and for the legal issues presented. She organizes the work, assesses the resources needed, and prepares a budget for the client. This has become her superpower in terms of being able to accept a wide range of work, including litigation.

Future Outlook

Looking ahead to the future, Julie shares, “The biggest benefit of the remote working environment that is readily accepted these days is that I am able to work anywhere in the world. Living in Chicago and experiencing year after year of cold and snow is something that I would like to leave in my rear-view mirror someday. I joke with my daughter, who will be entering high school this Fall, that when she ventures o to university (be it in the U.S. or overseas), I will move down the street from her dormitory. We laugh, but it is certainly a possibility!”

                     

 

The CEO Views September 1, 2023
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