We hear this month from highly experienced IP litigator Julie Katz on the COVID-19 pandemic, changing attitudes towards civility in IP law and other developments shaping the profession in 2023.
When we last spoke in 2021, you described seeing an increase in 'uncivil conduct' by IP attorneys. How has this been a detriment to effective legal advocacy in the sector?
The seemingly increasing levels of incivility in the profession usually impacts legal advocacy in a negative manner. What typically happens is that conflict between companies becomes conflict between the advocates. Instead of focusing on the strengths and weaknesses of the case, attorneys focus on bullying or intimidation litigation tactics.
This behaviour typically occurs during the discovery phase of a case, leading to more motion practice about issues not germane to the merits of the case. Clients end up paying higher attorney fees for having to fight about discovery matters that are, often, otherwise unnecessary. Settlement discussions became more challenging in which to engage.
In trademark cases, creativity in resolving conflict for consumers’ benefits is a key component to settlement. However, when the case goes from the likelihood of confusion issues to a series of senseless motions, a company’s desire to settle may be diminished.
Does the IP sector still struggle with this, or has there been a shift back towards civility?
I am thankful that over the past couple of years, I have experienced less and less uncivil conduct by opposing counsel in litigation. It could be that the pandemic has adjusted attorney views of client priorities and their own personal priorities.
Settling a case, which is usually in the best interest of the conflicting parties, means staying focused on the specific business issues that are able to be resolved to protect consumers from being confused. Keeping the parties engaged in settlement negotiations to come to a meaningful resolution of the issues raised comes together much sooner when lawyers are not clouding the material business issues with personal jabs or frivolous motion practice designed primarily to raise the costs of the case.
One factor you identified as contributing to incivility was a lack of adequate legal mentorship. Has there been any progress in this area?
I am seeing an increase of mentorship programs, which I believe is helping the platform. Law firms and legal organisations, at the private and state level, are engaging in stronger pushes for mentoring.
Some organisations have default assignments of an experienced attorney with a less experienced attorney. Some ask for volunteers. However, either way, my experience over the past couple of years is that the overall state of conduct is more civil. Advocating hard for your client’s rights does not require incivility. In fact, when my opponent is a skilled advocate, I find that the respect level is heightened and we get to resolution quicker.
What other developments have you witnessed? Has the lifting of pandemic-era restrictions allowed companies to build out their IP portfolios?
Even during the pandemic, it seemed that certain industries were able to dive deep into their IP portfolios and remain focused on protection and enforcement, including defensive measures. The silence of various industry distractions or interventions allowed for singular internal review in many companies so we didn’t experience a downtrend in productivity.
Advocating hard for your client’s rights does not require incivility.
Lack of commuting issues favoured this legal field, in my opinion. As pandemic-era restrictions are loosened, some judges are continuing to allow the flexibility that video status conferences add to everyone’s efficiency and productivity. It has been eye-opening and is shifting the past rigidity on in-person meetings that may require hours of travel for five minutes of face-to-face.
In-person court appearances are important, but are now being weighed against the issue presented to the court. For example, a summary judgment oral argument is generally better suited for face-to-face in the court with the judge, but much less so for a short status hearing to check that the case is moving forward.
Has the emergence of new digital assets and AI programs brought considerable change to the sector?
Digital assets in the nature of video conferencing improvements have served the legal profession – at least as far as I have experienced in the past two years – for the better. I have heard from a number of judges on best practices for this type of judicial interaction.
Julie A Katz, Founder
1711 N Hermitage Ave., Chicago, Illinois 66602, USA
Tel: +1 312-857-3101 | +1 312-593-3100
Julie Katz has over 30 years of experience in the intellectual property arena, working closely with clients on both litigation and prosecution across numerous technologies, industries and consumer markets. Her practice is focused on aligning her clients’ intellectual property portfolio with their overall business strategy by identifying, protecting and maximising their IP rights. With a deep understanding of IP law and enforcement strategies, a client-centred service philosophy and a history of successful litigation outcomes on high-profile infringement cases, Julie has earned the tactical and nuanced insight that allows her to rigorously protect her clients’ business interests.
