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Catherine Smith, ChiWIP In-House Advisory Committee Member

Catherine Smith, Senior Counsel at Wolters Kluwer, is legal counsel for the Tax & Accounting Division of Wolters Kluwer, meaning that she handles all types of legal issues related to WK's tax and accounting software, books, and journals. Additionally, she sits on two senior leadership teams within her division, for which she advises on everything from budgeting to new technology to hiring decisions. And although IP is not the main focus of her role, she also happens to manage WK's entire global IP portfolio—which consists of over 1800 trademarks, among other IP assets.

Catherine says the management of WK's intellectual property started as a "side gig," which she took on voluntarily because she enjoys the work and she saw a need for it when she started at WK three and a half years ago. It now makes up about 25% of her job, and she has tackled massive projects like auditing WK's trademarks worldwide, and creating IP policies and educational materials for the entire company.

Interestingly, Catherine had no intention of setting out to be an IP lawyer. After law school, when looking for a job, she was connected with a lawyer who happened to be an IP attorney. Seeing that Catherine had a degree in biology, he suggested patent law. At the time, she balked at the idea of sitting for another bar exam. But, she began working for him at a boutique IP firm. She ended up enjoying the work so much that a year or two later, she did sit for the patent bar, and later went back to school to obtain an LLM in IP with a focus on patent law.

Strengths Catherine has strong organizational skills and is very good at streamlining processes. She has a knack for identifying needs within an organization, and then finding solutions and writing policies to address those needs.

Her management of WK's IP portfolio is a prime example. No one pushed her to do it, but she saw how valuable it would be to have a clear understanding of the company's IP assets and a consistent approach to IP protection. In addition to the worldwide audit she managed, she has done training sessions with different groups within WK and created a policy for marketing teams on best practices. She also created an IP webpage with the company's brand policy and forms to use for requests related to IP. The more work she does, the more the company understands the value of having a well-managed IP portfolio.

Accomplishments Catherine recently received a First Chair Award as Top Intellectual Property Counsel. First Chair Awards recognizes the best and the brightest of in-house counsel who have, through their hard work and innovation, made significant contributions to the legal community. This is the third year that Catherine has received the award, signaling the respect that peers in the industry have for Catherine and her work.

Promoting the Success of Women in IP "When I'm looking for new counsel, I always want to make sure I'm considering the makeup of the team," says Catherine. The outside counsel she works with now have a strong representation of women in leadership positions and on WK's legal team. In addition to hiring women, Catherine provides guidance to women in IP and other women lawyers in general about transitioning to in-house roles. She says she is always happy to talk with others about this, and has a goal of recommitting to ChiWIP this year.

Interests "My family is all over the place," Catherine says, "so I travel a lot." Her parents live in California, and she has a sister in DC, a sister in California, and a brother who just moved from Miami to Detroit. In addition to jet setting around the country to visit family, Catherine took a trip to Trinidad at the end of 2019, wanting to end the year on a good note. Despite some transportation snafus, the weather was lovely, and she had a great time. When she's here in Chicago, Catherine enjoys spending time with friends, seeing live music, and going to the ballet.

Meet some of our other ChiWIP members here!

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Nicole Janovick
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