Intellectual property law is more complex than many people realize: while both patents and trademarks fall into the category of IP, they’re so different that few lawyers are well versed in both. Daniel Kelly is one of the few: as deputy general counsel, corporate services, with chief responsibility for intellectual property, Daniel Kelly oversees the patent and trademark portfolios at Vista Outdoor, the company behind brands such as CamelBak water bottles and Bell bicycle helmets. “Patents are all about protecting inventions, and trademarks really are all about protecting brands,” he explains. “In my experience, it’s rare in big firms that you find people who regularly practice both patent and trademark law.”
Kelly started his law career in an IP boutique firm. “I was exposed to all forms of intellectual property law. I litigated and prosecuted on both sides of patent and trademark, so I got a broad exposure,” he says. He also had an undergraduate degree in engineering, which is one requirement for eligibility to take the patent bar exam. “Throughout law school, anybody who learned that about me said, ‘Oh, you should consider becoming a patent attorney,’” he recalls.
Kelly’s experience is put to good use at Vista Outdoor, which owns nearly forty brands, each with their own product lines and new products always in development. “The product development teams involve me fairly early in the process when they’re aiming to develop a product that would have new features or new capabilities,” Kelly says.
The goal is to understand whether a patent can be obtained, which is difficult when dealing in mature and highly specialized consumer product markets. “Optics have been around for a long time, so to get something that’s patentable in the optics space, usually you’re working on a fairly novel edge of optics technology,” Kelly explains. “To find patentable ideas there and to get them protected is usually challenging.”
When addressing a legal challenge, “I strive to be a bit of a consultant, and I also can’t help being a bit of an educator,” says Kelly. That makes sense for a former teacher: prior to attending law school, he worked in a junior high and high school teaching everything from seventh-grade music to twelfth-grade physics. “Clients especially, but even coworkers, appreciate hearing the ‘why’ behind the legal opinion, because it empowers them to make good decisions,” he adds. “That’s how I always try to manage laterally towards clients: empowering them with information. And I found that generally works.”
“I strive to be a bit of a consultant, and I also can’t help being a bit of an educator.”
As a manager, Kelly tries to stay informed without micromanaging. Occasionally that means his team will spend time on a question that he already knew the answer to, but he’s learned that’s not always a bad thing. “It allows your direct reports opportunities to learn on their own,” he says. “In my experience both as a manager and someone who’s been managed, I’d prefer that environment to one where you have the supervisor constantly looking over your shoulder.”
As a mentor, Kelly says there’s no magic—it’s all about being friendly and available, especially to young lawyers recently out of law school. “They’re often put in these environments—either a corporate environment or an in-house or a private practice environment—where they’re tasked with giving legal advice to people who have been in business for years, and it’s daunting,” he says. “I owe it to the next generation of lawyers just to be accessible—to help pass on and ease that transition.”
Kelly has two pieces of advice for what might be called “impostor syndrome.” “One is ‘fake it till you make it.’ Put a different way, some friends of mine and I used to talk about ‘the confident walk’—if you just walk confidently like you’re supposed to be in any particular place, you can walk into almost any environment and be convincing,” he says.
“The second element is just a good dose of humility; being willing to learn from your mistakes. When you do go in with confidence and you blow it, you embrace the failure and learn from it so that you don’t make the same mistake again,” he says.
Confidence is also an invaluable trait when it comes to working with clients, Kelly says, because many aspects of the law can feel urgent or frightening to people who don’t routinely deal with them. “For a business or a person running a business to find out that they’ve been sued is generally not good news. The one thing a lawyer who’s seen hundreds of lawsuits can do is, you can immediately walk in and say, ‘OK, this is survivable, this happens to a lot of companies, and here’s the game plan,’” he says. “It’s a great thing to be able to calm down a business stakeholder or client when they’re facing any legal risk.”
Kelly says calm is the preferable mode when practicing law, rather than excitement—though he admits that he will “geek out” over a new invention that he’s working on. Still, his favorite part of his job is educating those around him. “It’s always exciting to be involved in the development of a new invention, or brand, or marketing campaign. But as fun as that can be, I get the most satisfaction out of helping people navigate the legal issues and solve problems.”
Integra IP NZ
“Integra IP NZ Ltd works with Dan on complex brand protection investigations and enforcement actions, often in challenging environments. Dan’s understanding of intelligence-led solutions drives successful operations. A strategic thinker and consummate IP professional.”
–Simon C. Greatorex, Managing Director