Katie Staba is a partner at K&L Gates in the Technology Transactions and Data Protection practice group at the firm’s Chicago office. Her practice focuses on complex global transactions and counseling relating to digital media planning and buying, advertising and marketing, claim substantiation, software licensing, She counsels clients on intellectual property issues in mergers, acquisitions and investments, unfair competition and trade secrets and competitive intelligence.
Katie attended Loyola University Chicago School of Law where she served as the Executive Editor of Loyola’s International Law Review. Recently, Katie was named to Crain’s 2020 Notable Women in the Law.
I had the opportunity to learn about Katie, her IP practice, and how she first got interested. The following is an edited version of our discussion that includes my own explanations of some IP lingo for those who may be less familiar.
How did you first become interested in the world of IP?
I knew I wanted to be a lawyer, but I had no idea what area of law. When I was a senior in college and undergrad at Boston University, I took a job as effectively a law clerk at a pre-IPO [privately held company preparing for an initial public offering (IPO)] biotech company in Boston. I worked directly for a patent attorney who was a really great teacher. He had just taken the patent bar [an exam required to represent inventors in front of the USPTO, available to those with science and engineering degrees] and he wanted to teach me everything that he had just learned. He would take me into a conference room and spend hours just explaining patent prosecution [the process to obtain a patent] to me so I could become a patent prosecution paralegal [one who assists patent attorneys in drafting and filing documentation for obtaining patents] . That’s how I learned about IP, through my mentor who is now general counsel of a biotech company in California. I owe him a lot because I had no idea what I was going to do in the law. And I fell in love and just continued from there.
What did you study during undergrad that allowed you to do patent work?
I do not have a technical background, I just ask a lot of questions. I was a patent prosecution paralegal at the biotech company, but when I joined a law firm and as an attorney a summer associate, I did patent litigation, mostly, and then trademark prosecution [the process for obtaining federally registered trademarks]. I can’t do patent prosecution as an attorney since I’m not eligible to take the patent bar. I was a political science major with a double minor in French Language and English literature, the most liberal arts degree humanly possible. Lots of reading, lots of talking. I used to say I could talk and I could write about politics in two languages. That that was my shtick.
What does your current practice look like?
I don’t do any more litigation. I hung that hat up years ago. I mostly do transactional work. Anything related to intellectual property on paper. It could be diligence [examining and analyzing a company’s legal documents] of a company’s IP and technology for M&A [mergers and acquisitions] deals. It could be a licensing deal. It could be a company that’s got a SaaS [software as a service] software, and that’s their main bread and butter.
My niche is more in the advertising, marketing and media side. I work clients through that. The connection to IP in that space is that the Lanham Act, the federal trademark statute, has a false advertising section. That is the statute that’s often used in federal false advertising cases. So it’s all interconnected. Unfair and deceptive trade practices are effectively related to intellectual property. I like to say we’re like the cousins of the IP group.
What kind of background is useful for a law student who is interested in technology transactions?
I started out as a tried and true IP attorney, but I don’t think that’s necessarily the common path for people in my group. I think a lot of people started off as more general contracting practitioners [lawyers who focus on contracts]. But I think it’s really helpful to understand the ins and outs, both in terms of filing and enforcement and protection of all these different IP. Patents, trademarks, copyrights, trade secrets, and everyone forgets about trade secrets. I think it’s really helpful to understand the meat of that.
Courtesy of Pixabay
I would say any sort of background in law school that gives you really solid commercial contracting background. Contract drafting, that used to be a class at Loyola, was an incredibly helpful class just from understanding the nuts and bolts of what goes into a contract and what makes it enforceable. What the recitals [background section] are and why they’re important and not important. How the signature blocks work and why we say all these words before the signature. All those details are super helpful to understand. Then any of the foundational IP classes [Intellectual Property Law, Patent Law, Trademark Law, Copyright Law] are going to allow you to marry the two in a way that will poise you perfectly to join any tech trans practice.
Would you recommend Loyola as a law school for someone interested in IP?
I would absolutely. I think Professor Ho runs an incredible program. I think it’s only become better over the years. You’re in a vibrant city to practice intellectual property. But more than that, you’re surrounded by other law schools that also have like a really solid foundation in in IP, and that helps bring up the entire tide of practitioners in the area. I also think Chicago’s an interesting intersection between the East Coast old school intellectual property practitioners and the West Coast. You’re right in the middle. The geographic centrality helps with you being able to understand and speak with a lot of your different clients who may cross a lot of those different areas.
Were there any classes or extracurricular curriculars that you did in law school that were particularly valuable to you?
If I could do it again, I think I’d take even more classes that were just off the wall. I did the London advocacy program with Dean Faught which was really interesting. It was over the winter break in London, you go and are at an Inn of Court [professional associations for barristers] and learn the ways there. That was a really cool program.
Parliament and Big Ben by Marcin Nowak licensed under Unsplash
In my second and third years, I was heavily involved in Professor Moses’s International Arbitration team. I was on the team my second year and helped coach it the next year. I still help out the team when I can.
And I think Professor Moses’s class on international business transactions has been one of the most helpful classes that I took in law school, particularly if you want to join a global law firm to understand the differences in contracting cross borders, which is really more the norm now than ever before. Understanding what an irrevocable letter of credit [a guarantee for payment issued by a bank] is, and how that works. Understanding Incoterms [rules defining responsibilities of buyers in sellers in international transactions], like who’s responsible for a product when it hits the freight carrier that’s going to take it across the ocean. What if a freight carrier gets caught up in a storm and all the freight falls overboard? Who’s responsible? Those are the very real world questions that Professor Moses’s class tackled and gave you an introduction to. I think she’s just a fabulous professor. I think her classes are incredible.
I do think the legal writing program at Loyola is very real world and I liked that. I think it gives you a little bit of a closer sense of what it’s really like to practice. How to write or how to think or how to structure documents. I would recommend students to take a class about client communications, such as an advanced legal writing class on how to structure an email, using bullet points effectively, how to highlight things to your clients, thinking about privilege and communications and what should be a phone call versus an email. All of those things, I think are things that you learn through practice, but I feel like they could have a really key place in law school.
What’s the most rewarding part of your job?
I like to help the clients tackle the untackleable level and find a path through a jagged forest. By the time a client might come to you, oftentimes, I feel like they’re seven steps in a murky direction, and you’re trying to right the course. If you know what you’re doing, you can help navigate them through that and bring them to a good place and win the trust of a client for years to come.
Corinne Macnichol
Senior Editor
Loyola University Chicago School of Law, J.D. 2026