Robert Katz has successfully built a remarkable career helping innovators protect the ideas and designs that shape industries. He is recognized as a global leader in design law and is known for his deep expertise in utility patents, industrial designs, and intellectual property counseling. He has worked with clients ranging from Fortune 500 companies to small businesses and independent inventors, helping them turn innovation into long-term value. Robert Katz is a Attorney at Banner Witcoff Company
Chances are you have purchased at least a few products that he has protected with intellectual property. He has helped secure more than 11,000 U.S. design patents and over 32,000 international design rights. These procured rights have been used to stop hundreds of infringers and knockoffs. Many of the patents he has worked on have contributed to business growth, successful licensing deals, and company acquisitions.
Beyond his legal practice, Robert Katz is a recognized speaker, author, and educator who has shared his expertise with organizations and universities around the world. In fact, he has given presentations in six of the seven continents. His contributions continue to shape conversations around innovation, design protection, and intellectual property on a global level.
In a fireside chat with him, we got an opportunity to dive deep into his thoughts about the intellectual property sector, patents, and his leadership.
Your career uniquely bridges engineering, patent examination, private practice, and academia. How have these diverse experiences shaped your overall philosophy toward protecting and commercializing innovation?
My career has allowed me to engage with innovation from multiple vantage points: engineering, patent examination, private practice, and academia, and each perspective has reinforced the importance of viewing intellectual property as a comprehensive, integrated process. It has also helped me better realize the importance, viewpoints, and goals of every player in the IP protection process – from the innovators and their companies, to their IP attorneys, and to the US patent examiners.
As an engineer, I developed a deep appreciation for the effort, creativity, and problem-solving that underpin innovation. My time as a patent examiner highlighted the balance required in evaluating applications fairly while applying statutory requirements. In private practice, I’ve been able to bridge the gap between inventors and the companies commercializing their work, aligning legal protection with business strategy. Teaching has further sharpened my thinking by keeping me engaged with emerging legal developments and encouraging continual reflection on best practices.
Together, these experiences have shaped a philosophy focusing on securing intellectual property rights that are commensurate with the value and potential of the underlying innovation, while recognizing that effective protection requires coordination across every stage of the process.
Having begun your career as a mechanical engineer before moving into patent examination and later private practice, how has your technical background influenced the way you interpret and argue complex patent claims?
Most patent attorneys have engineering or science educational backgrounds, so from that standpoint, my experience is not unique. However, having worked as a mechanical engineer has given me a first-hand understanding of how inventions are conceived and developed. This perspective allows me to better interpret what inventors are truly trying to achieve and to translate that into strong, strategically drafted patent claims. It also informs how I argue patentability. I focus not only on the technical distinctions over prior art, but on articulating the real-world significance of those differences. This helps present inventions in a way that resonates with examiners and strengthens the overall case for protection.
You spent several years as a patent examiner before entering private practice. From your perspective, what are the most important insights inventors and companies should understand about how patent examiners evaluate applications?
One of the most important insights is that the patent examination process is not inherently adversarial. Most examiners want to allow applications that meet the statutory requirements. Their role is to ensure that claims are properly supported, novel, and non-obvious, not to deny protection unnecessarily.
Understanding this dynamic is critical. A cooperative, well-reasoned approach grounded in clarity, responsiveness, and credibility tends to be far more effective than a confrontational one. Applicants who appreciate how examiners evaluate applications are better positioned to navigate prosecution successfully and procure meaningful patent rights.
Over the past three decades, intellectual property has evolved from a largely legal concern into a strategic business asset. How have you seen companies’ attitudes toward IP protection change during your career?
Over the course of my career, intellectual property has evolved and is now a central component of business strategy. Companies today are far more deliberate in how they develop, manage, and leverage IP portfolios.
That said, approaches still vary widely. Some organizations take a highly strategic, integrated view of IP, while others remain more reactive. Changes in internal leadership, market dynamics, and legal developments can also shift priorities. Increasingly, however, companies recognize that well-structured IP protection can drive valuation, competitive positioning, and long-term growth.
Design patents have gained significant prominence in recent years, particularly in industries where product aesthetics are closely tied to brand value. What distinguishes design patent protection from other forms of IP, and why is it increasingly relevant today?
Design patents have been valuable for many, many years, but their importance has grown significantly as products have become more design-driven and brand-focused. Unlike utility patents, which protect how something works, design patents protect how something looks, its visual appearance. In today’s marketplace, where aesthetics are closely tied to consumer perception and brand identity, that protection is critical.
The modern commercial environment, particularly the ease of manufacturing and selling products online, has made it easier for competitors to copy and knock off product designs. Design patents provide a powerful tool to address this risk by protecting against substantially similar appearances and helping companies safeguard the visual aspects of their products.
Your early work involved examining utility patent applications related to robotics, material handling systems, and industrial technologies. How do you see emerging technologies, particularly automation and artificial intelligence, reshaping the challenges and opportunities within patent law?
Emerging technologies, particularly artificial intelligence and automation, are poised to significantly reshape both innovation and patent law. AI is increasingly being used as a tool to assist engineers and developers, accelerating the pace of innovation and potentially leading to a higher volume of patentable inventions. At the same time, these technologies raise new questions around inventorship, patent eligibility, and the boundaries of protection. Overall, these developments present both opportunities and challenges. The legal framework will need to continue evolving to keep pace with the ways innovation is being created and deployed.
In your experience advising innovators and companies for more than three decades, what are the most common strategic mistakes organizations make when developing and protecting their intellectual property portfolios?
One of the most common mistakes organizations make is failing to adopt a holistic intellectual property strategy from the outset. Too often, companies approach IP in a piecemeal fashion, addressing utility patents, design patents, trademarks, and other rights independently rather than as part of an integrated plan. This can lead to missed opportunities or even conflicts between different forms of IP protection. Another frequent issue is a lack of alignment across departments. For example, marketing decisions can impact trademark or design rights, and without coordination, companies may inadvertently weaken their position. A thoughtful, coordinated strategy aligned with business objectives helps maximize protection while avoiding unintended trade-offs.
As an Adjunct Professor teaching design law, you engage with the next generation of legal professionals. How has teaching influenced your own thinking about intellectual property, and what shifts do you see in how younger lawyers approach the field?
Teaching has had a meaningful impact on my own thinking by requiring me to continually revisit foundational principles and stay current with evolving legal issues. While I don’t see a fundamental difference in how younger lawyers approach intellectual property law, I do see differences in how they approach work more broadly, including expectations around collaboration and work-life balance. For firms, the key is to adapt to integrating younger lawyers effectively while maintaining high standards and fostering professional development. Teaching also reinforces the importance of understanding how different areas of IP patents, trademarks, trade dress, and copyrights interact in practice.
With innovation increasingly occurring across global markets, what are the key challenges companies face when attempting to secure and enforce intellectual property rights internationally?
As innovation becomes increasingly global, companies face significant challenges in securing and enforcing intellectual property rights across multiple jurisdictions. Each country has its own legal framework, enforcement mechanisms, and procedural nuances. Successfully navigating this landscape requires not only technical and legal expertise but also strong local partnerships in all relevant countries. This can be extremely important when considering procurement and enforcement strategies. Through my leadership and involvement in international organizations such as FICPI and INTA, I’ve been able to build relationships with experienced professionals around the world, enabling the formation of effective, coordinated teams to support clients in both procurement and enforcement.
For technology startups and entrepreneurs who may not yet fully appreciate the strategic value of IP, what foundational principles should guide their approach to protecting new ideas?
Without proper protection, companies risk allowing competitors to adopt their technology, replicate their product designs, or trade on their brand identity. Utility patents protect technological innovation, design patents protect product appearance, and trademarks protect brand recognition. A strategic approach to IP can significantly enhance a company’s ability to grow, compete, and attract investment. Securing the right protections early on can make a meaningful difference in reaching the next stage of development.
Looking back across your career from the early days of examining patents to advising clients today, what developments in patent law or policy have had the most profound impact on the innovation landscape?
Several important developments have had a profound impact on the innovation landscape. For some examples, in the utility patent space, evolving case law around computer-implemented inventions has made it more challenging to obtain patent protection, requiring practitioners to develop more creative and strategic approaches. On the design patent side, the Egyptian Goddess decision provided important clarity by course-correcting the standard for infringement. This has strengthened the role of design patents as a practical enforcement tool. On the trade dress side, the TrafFix decision provided enhanced clarity relating to trademark protection for product configurations.
As technologies continue to evolve at an unprecedented pace, what major trends or transformations do you believe will shape the future of intellectual property law in the coming decade?
Artificial intelligence will undoubtedly play a central role in shaping the future of intellectual property law, though the exact trajectory remains uncertain. AI will influence both how innovations are created and protected, and it will raise complex legal and policy questions. While there is ongoing debate about the implications, one constant will be the need for practitioners to stay closely attuned to developments and to craft thoughtful, adaptive strategies for clients.
At Banner Witcoff, you’ve built a nationally recognized design patent practice that has procured more U.S. design patents than any other firm. Why are the clients coming to you?
Our firm has been active in protecting product designs for many decades. It has been exciting to help protect the appearance of scores of products used by millions of consumers. Hundreds of the design patents we prosecuted have been successfully enforced. As our experience grew, our client base did as well. We have now acquired design patent portfolios of over 30 design patents for over 45 clients, including design patent portfolios of over 100 design patents for 18 clients.
Robert Katz make it a point to try to be as creative with our strategies as the designers are in designing the products. Our clients expect us to be on the leading edge of design patent strategy, and we work hard to deliver. Our approach goes beyond filing applications; we develop coordinated strategies that integrate design patents with utility patents, trademarks, and trade dress to create meaningful barriers to entry. In today’s environment, where copycat products can be manufactured and sold globally almost overnight, design patents have become one of the most effective tools for enforcement, particularly in online marketplaces. It’s a dynamic and increasingly important area of law, and one where we’re proud to be trusted by leading, design-driven companies.
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