CHARLES (CHICO) L. GHOLZ is a partner in the Litigation and Patent Interferences practice groups, specializing in patent interferences. In addition to general patent litigation, he is particularly skilled at handling patent interferences under 35 USC § 135 before the Board of Patent Appeals and Interferences (BPAI) and court review of decisions by the BPAI in interferences. He handles both appeals to the Federal Circuit under 35 USC § 141 and civil actions in district courts under 35 USC § 146. Mr. Gholz represents a wide variety of domestic and foreign clients across a range of technologies including biotech, chemical, electronics, computers and lasers. He regularly appears before the BPAI, the Federal Circuit, and various district courts. He also counsels on patent validity and patentability, and he has appeared as an expert witness on patent issues. Prior to joining the firm, Mr. Gholz served as an assistant technical advisor to the Honorable Giles S. Rich of the U.S. Court of Customs and Patent Appeals (1970-1972). A former Lecturer in Law at George Mason University School of Law, he has written and lectured widely on patent law. In addition, he co-authored "Court of Appeals for the Federal Circuit: Practice and Procedure," LexisNexis, and "Patent Practice," Patent Resources Institute. Professional Affiliations American Bar Association, Patent, Trademark and Copyright Law Section; Chairman, Court of Appeals for the Federal Circuit Subcommittee, Federal Practice and Procedure Committee (1982-1983) American Intellectual Property Law Association (AIPLA), Chairman, Interference Committee (1988-1990); Chairman, Amicus Committee (1994-1996) Association of Former Court of Customs and Patent Appeals Law Clerks and Technical Advisors, President (1978-1979) District of Columbia Bar, Steering Committee, Patent, Trademark and Copyright Law Division (1984-1986), Vice Chairman (1985-1986) Patent, Trademark & Copyright Journal®, Advisory Board member Experience Representative Matters Obtained summary judgment of non-infringement (affirmed on appeal) with respect to four patents on business forms asserted by Moore against client Standard Register. Moore U.S.A. Inc. v. Standard Register Co., 60 F.Supp.2d 104, 52 U.S.P.Q.2d 1382 (W.D.N.Y. 1999); 139 F.Supp.2d 348, 58 U.S.P.Q.2d 1332 (W.D.N.Y. 2001); 139 F. Supp.3d 364, ___ U.S.P.Q.2d ___ (W.D.N.Y. 2001); 229 F.3d 1091, 56 U.S.P.Q.2d 1225 (Fed. Cir. 2000). Obtained a judgment in favor of client Plet, canceling the claims in Lutzker's patent on the ground of fraud. Lutzker v. Plet, 7 U.S.P.Q.2d 1214 (BPAI 1987), aff'd, 843 F.2d 1364, 6 U.S.P.Q.2d 1370 (Fed. Cir. 1987). Represented McDonnell Douglas in a leading case on the issue of suppression or concealment in which the court held that public disclosure of the invention (which related to wide-bodied aircraft) cuts off the suppression or concealment clock. Correge v. Murphy, 705 F.2d 1326, 217 U.S.P.Q. 753 (Fed. Cir. 1983). Established the eligibility for registration on the Principal Register of the shape of a part of a musical instrument. Yamaha International Corp. v. Hoshino Gakki Co., 231 U.S.P.Q. 926 (TTAB 1986), aff'd, 840 F.2d 1752, 6 U.S.P.Q.2d 100 (Fed. Cir. 1988). Successfully represented Ferring AB in a leading opinion on 35 USC § 135(c) which held that an agreement settling an interference could be accepted for filing by the USPTO after termination of the interference despite the fact that the petition and petition fee were not filed within the six-month period following termination of the interference as required by 37 CFR 1.666. LaCroix v. Bellini, 58 U.S.P.Q.2d 1528 (CAPJ 2001). Accolades Martindale-Hubbell® AV® Preeminent™ 5.0 out of 5 Best Lawyers in America (2012) Chambers USA (2010) Patent Law Experts Guide (1997, 1999, 2001, 2003, 2005, 2007, 2009) Patent and Trademark Office Society special citation "in recognition of his many outstanding articles and letters to the editors in the Journal of Patent and Trademark Office Society over a sustained period of years" (2000) Resources News Seven Oblon, Spivak Attorneys Named To Best Lawyers 2012
Thursday, September 15, 2011 Chambers USA 2011 Again Ranks Oblon, Spivak Among Top IP Firms in Northern Virginia
Tuesday, June 14, 2011 BPAI Reverses Written Description and Prior Art Rejections Resulting in Important Victory for GSI Group, Inc.
Tuesday, January 18, 2011 Seven Oblon, Spivak Attorneys Named To Washington, DC's Best Lawyers 2011
Friday, October 29, 2010 Oblon, Spivak's Chico Gholz quoted in Law360 - Fed. Circ. Won't Halt Interference Over Allvoice Patent
Wednesday, August 4, 2010 Chambers USA 2010 Ranks Oblon, Spivak Among Top IP Firms in Northern Virginia
Wednesday, June 23, 2010 Advanced Voice Recognition Systems, Inc. Retains Oblon Spivak For Interference
Thursday, March 25, 2010 Chambers USA 2009 Ranks Oblon, Spivak Among Top IP Firms in Northern Virginia
Friday, June 12, 2009 Chambers USA 2008 Ranks Oblon, Spivak Among Top Intellectual Property Firms in Northern Virginia
Wednesday, June 18, 2008 The Board of Patent Appeals and Interferences Decides in Favor of Convolve Against Seagate in Disk Drive Technology Interference
Thursday, January 17, 2008 Chambers USA 2007 Ranks Oblon, Spivak #1 Again Among Intellectual Property Firms in Northern Virginia
Thursday, July 5, 2007 Oblon, Spivak Ranks #1 on Chambers USA List of Intellectual Property Firms in Northern Virginia; Arthur Neustadt and Charles Gholz Named Top IP Attorneys
Friday, June 3, 2005 Oblon, Spivak Files Amicus Curiae Brief with U.S. Court of Appeals for the Federal Circuit in an Interference Case
Friday, August 1, 2003 Charles L. Gholz Receives Special Citation from the U.S. Patent and Trademark Office
Tuesday, February 1, 2000 Festo Corporation vs. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc.
Monday, November 1, 1999 First Interference Involving 11 Patents--Such Interferences Offer Economic Benefits To Patent Owners
Thursday, October 1, 1998 US Rulings Muddle Patent Interference Law
Wednesday, January 1, 1997 The Taking of Voluntary Testimonial Depositions in Japan for Use in U.S. Patent Interferences
Monday, January 1, 1996 Publications The Board Does Hear Live Testimony and Make Credibility Determinations!
Thursday, December 1, 2011 Is Dilatory Behavior In Provoking An Interference A "Failure To Engage In Reasonable Efforts To Conclude Prosecution Of The Application"?
Wednesday, November 2, 2011 Should Patent Prosecution Bars Apply To Interference Counsel?
Monday, October 10, 2011 A Disclaimed Claim Is Not Always Treated As If It Had Never Existed!
Friday, September 2, 2011 "Good Cause" Under 37 CFR 41.202(d)(2)
Thursday, September 1, 2011 Comparing And Contrasting Standing In The BPAI And The TTAB
Monday, August 1, 2011 Narrowing Reissue Applications Can Again Be Used To Provoke Interferences!
Friday, July 1, 2011 Additional Discovery Prior To Cross-Examination
Sunday, May 1, 2011 Using A Suggestion Of Interference To Undermine A Competitor's U.S. Patent Application
Wednesday, April 6, 2011 A Critique Of Recent Opinions In Patent Interferences
Saturday, April 2, 2011 What To Do If The APJ Limits The Number Of Claims To Be Added To A Patent Or An Application In Interference
Friday, April 1, 2011 What To Do If Fewer Than All Of The Named Inventors Contributed To The Subject Matter Defined By The Count
Tuesday, March 1, 2011 What Does Your Priority Statement Buy You?
Tuesday, February 1, 2011 Is The Board Putting Some Teeth Into The Sanctions Rule?
Monday, January 3, 2011 You Must Aggressively Assert Your Rights Under Koninklijke!
Wednesday, December 1, 2010 When Should a Patentability Motion Be Deferred to the Second Phase?
Monday, November 1, 2010 How Close Is Close Enough?
Friday, October 1, 2010 Sugano v. Goeddel II
Thursday, September 9, 2010 Goeddel v. Sugano
Tuesday, September 7, 2010 Is The Respondent's Entire Specification "Prior Art" On A Motion For A Judgment Of No-Interference-In-Fact?
Wednesday, September 1, 2010 Should a Patent Infringement Action Be Stayed Pending Resolution of an Interference Involving the Patent Asserted in the Infringement Action?
Monday, August 30, 2010 Would Derivation Proceedings Be The Same As Derivation Interferences?
Friday, August 27, 2010 When, If Ever, Do Broadening Amendments Create Problems Under 35 USC 135(b) ?
Wednesday, July 28, 2010 Are All Panels of the Federal Circuit Following Agilent and Phillips?
Monday, June 28, 2010 A Critique of Recent Opinions in Patent Interferences
Tuesday, June 1, 2010 Are Agilent And Philips Limited To Claims Copied In IPSISSIMIS VERBIS?
Friday, May 28, 2010 How Good Is Good Enough?
Thursday, April 1, 2010 The Board Must Decide Every Patentability Motion That Is "Fully Raised And Fully Developed During The Interference"-But Must It Permit Every Authorized Patentability Motion To Be "Fully Developed"?
Saturday, March 20, 2010 Prosecution Of Targeting And Targeted Applications Before The Same Examiner
Sunday, February 28, 2010 Are District Court Orders Remanding 35 USC 146 Actions Appealable?
Sunday, January 3, 2010 Could The ATJs Learn Something From The APJs Concerning Handling Fraud Issues?
Wednesday, December 30, 2009 When Can APJs Use Their Common Sense in Inter Partes Proceedings?
Monday, November 30, 2009 The Board Must Afford Interferents Due Process!
Friday, October 30, 2009 How Should "Copied" Claims Be Interpreted?
Wednesday, September 30, 2009 Can You Put An Independent Fact Witness Under A Contract That Provides That He Or She Will Not Talk To Opposing Counsel Voluntarily?
Sunday, August 30, 2009 Have Ding v. Singer and Ryan v. Young Rationalized 35 USC 135(b)(2)?
Thursday, July 30, 2009 Request Rehearing!
Monday, July 20, 2009 Would Derivation Proceedings Be The Same as Derivation Interferences?
Sunday, July 19, 2009 Is It Ok To Lie To Opposing Counsel?
Monday, April 6, 2009 Aristocrat v. IGT: Another Reason Why Provoking an Interference May Be Preferable to Defending an Infringement Action
Sunday, April 5, 2009 Can Counsel for an Interferent Represent an Independent Fact Witness at a Deposition?
Saturday, April 4, 2009 A Critique of Recent Interference Opinions in Patent Interferences
Saturday, April 4, 2009 What To Do If The Target Patent Has Expired
Sunday, March 8, 2009 Is Plausible Enough After Brand v. Miller?
Sunday, March 8, 2009 When Does Outside The Count Count?
Saturday, March 7, 2009 Telephone's Inventorship Probed in New Book
Thursday, March 5, 2009 What Will Become of Patents Issued to Prevailing Applicant-Interferents As The Result of Decisions By Unconstitutionally Appointed APJs?
Wednesday, March 4, 2009 Is 37 CFR 41.127(a) Valid Under Tafas v. Dudas?
Tuesday, March 3, 2009 If You Settle a 35 USC 146 Action with A Stipulated Judgment, What Should It Say?
Wednesday, August 20, 2008 Should an Applicant Interferent Ask to Have as Many as Possible of Its Opponent's Motions Treated as Threshold Motions?
Friday, July 25, 2008 Brand v. Miller Prevents Administrative Patent Judges From Using Their Common Sense in Inter Partes Proceedings,
Thursday, June 26, 2008 Interference Estoppel is Worse Than Issue Preclusion
Wednesday, June 25, 2008 How Detailed Does Your List of Proposed Motions Have to Be?
Sunday, May 25, 2008 Can Narrowing Reissue Applications Still Be Used to Provoke Interferences?
Friday, April 25, 2008 What Excuses for Inactivity During a Classical Diligence Period Are (and Are Not) Good?
Tuesday, March 25, 2008 Interference Issues That Wouldn't be Handled by The Proposed Legislation
Thursday, February 28, 2008 Is It Prudent to Be Named as Lead or Back-up Counsel by a Patent Practitioner Whose Power of Attorney Was Signed by the or a Named Inventor?
Wednesday, January 30, 2008 A Critique of Recent Opinions in Patent Interferences
Wednesday, January 30, 2008 What To Do If A Real Party In Interest Goes Bankrupt
Monday, December 31, 2007 Brand v. Miller Demonstrates that the Federal Circuit is Giving Insufficient Deference to the Factual Findings of the Patent and Trademark Office
Sunday, December 30, 2007 Should the Prima Facie Case Include a Showing of the Lack of Suppression Or Concealment?
Friday, November 30, 2007 Would You Rather Have Your Opponent's Patentability Issues Decided Inter Partes or Ex Parte?
Wednesday, October 31, 2007 Proving Peeler Diligence is Unnecessarily Difficult -- and Unnecessarily Costly
Saturday, September 29, 2007 Would First-Inventor-to-File Be Better for the Basement Inventors, the Universities, or the Corporations?
Wednesday, August 29, 2007 Is Brand v. Miller Consistent With KSR Int'l Co. v. Teleflex Inc?
Monday, July 30, 2007 Guidelines? What Guidelines?
Saturday, June 30, 2007 What Does "Any and All Right, Title, or Interest" Mean?
Wednesday, June 6, 2007 Do Documents Generated by an Inventor Have to Be Corroborated?
Saturday, April 28, 2007 Who You Gonna Call?
Friday, March 23, 2007 Zealously Representing a Client Versus Collegiality
Friday, February 23, 2007 A Critique of Recent Opinions in Patent Interferences
Wednesday, January 31, 2007 Participation By A Victorious Interferent In the Losing Interferent's Post-Interference Prosecution
Tuesday, January 23, 2007 What is the Time Limit for Filing a Cross-Action under 35 USC 146?
Saturday, December 16, 2006 If You Try to Remove a 35 USC 102(a) or 102(e) Reference Via a 37 CFR 1.131 Declaration and Fail, You Have Probably Waived Your Right to Put on a Priority Case
Thursday, November 16, 2006 It's OK To Pay Fact Witnesses for Their Time
Monday, October 16, 2006 Must the Punishment Fit the Crime?
Saturday, September 16, 2006 Corrections of "Obvious Mistakes" During an Interference
Wednesday, August 16, 2006 The Board Should Have 35 USC 256 Jurisdiction
Friday, June 16, 2006 When (If Ever) Is the Judgment of a District Court in a 35 USC 146 Action Binding on the Board?
Tuesday, May 30, 2006 When Does Reliance on Attorney Diligence Waive the Attorney-Client Privilege?
Sunday, April 30, 2006 A Critique of Recent Opinions in Patent Interferences
Saturday, April 29, 2006 May a Practitioner Both Act as a Counsel in an Interference and Testify as to His or Her Diligence In Preparing an Application?
Friday, March 31, 2006 There Are Limits to How Tricky One's Questioning Can Be
Wednesday, February 22, 2006 A Critique of Recent Opinions in Patent Interferences
Monday, February 20, 2006 When Is the Declaration of an Interference a Ticket to Ride to the End of the Line?
Tuesday, January 31, 2006 Sequestration of Interference Witnesses
Thursday, December 22, 2005 Expert Witness Problems - and Proposed Solutions
Tuesday, November 22, 2005 Does the PTO Have Jurisdiction to Issue a Patent to an Applicant That Prevailed in a 35 USC 146 Action During the Pendency of an Appeal to the Federal Circuit by the Losing Patentee?
Friday, October 7, 2005 Tierney Interferences
Wednesday, September 7, 2005 Errata Sheets in Interferences
Sunday, August 7, 2005 Does Reliance on Attorney Diligence Waive the Attorney-Client Privilege?
Thursday, July 7, 2005 The Trial Section Should Have An Analog To FRCP 50 (a)(1)
Tuesday, June 7, 2005 Markman Hearings For Interferences?
Saturday, May 7, 2005 The Impact of the CREATE Act On Interferences
Thursday, April 7, 2005 A Suggestion For Saving Trees - And File Space At The Board
Monday, March 7, 2005 Why Should Trial Section Decisions Be Given Any Deference During District Court Review?
Monday, February 7, 2005 Are Side Agreements Between Counsel Enforceable Before the Board?
Tuesday, February 1, 2005 A Critique of the New Rules and the New Standing Order in Contested Case/Interference Practice
Monday, January 31, 2005 What's The Use Of 37 CFR 41.150(C)(2)?
Tuesday, January 25, 2005 What To Do If Your Client Buys Your Opponent's Case In Interference Late In The Game
Wednesday, December 15, 2004 How to Redact an Exhibit for Use in an Interference
Monday, November 15, 2004 What to Do if Your Client May Infringe Both of Two Interfering Patents?
Friday, October 15, 2004 How Should We Deal With § 16.3 of the Trial Section's Standing Order?
Wednesday, September 15, 2004 Must an Expert Witness's Opinion be "Supported by Cited Literature"?
Sunday, August 15, 2004 Videotaping Interference Testimony
Thursday, July 15, 2004 A Critique of Recent Opinions in Patent Interferences
Wednesday, January 28, 2004 How Hard Is It, Really, to Prove Derivation?
Monday, December 15, 2003 Targeting Applicants Should Be Expressly Authorized to File 37 CFR 1.313 Petitions to Withdraw Target Applications From Issuance for Consideration of a Possible Interference
Saturday, November 15, 2003 In 35 USC 146 Actions, Should District Courts Decide Issues That Were Not Reached by the Board?
Wednesday, October 15, 2003 Supplement to "Patent Interferences Strategies"
Wednesday, October 1, 2003 The Majority of a Three-Judge Panel of the Federal Circuit Has Approved the Two-Way Test of Winter v. Fujita-But Help May Be On the Way
Monday, September 15, 2003 Sometimes the Trial Section Does Handle Patent-Patent Interferences After All!
Friday, August 15, 2003 Binding Precedent in the Trial Section of the BPAI
Tuesday, July 15, 2003 Post-Interference Ex Parte Prosecution by a Losing Applicant Interferent
Sunday, June 15, 2003 Patent Interferences Strategies
Friday, February 28, 2003 A Critique of Recent Opinions in Patent Interferences
Wednesday, January 1, 2003 "Patent Interference Proceedings Before the USPTO"
Saturday, December 28, 2002 A Critique of Recent Opinions in Patent Interferences
Saturday, December 28, 2002 Is It Safe Not to File a Copy of a Settlement Agreement Entered Into After Court Review of a Board Decision in an Interference Has Begun?
Friday, February 1, 2002 A Critique of Recent Opinions in Patent Interferences
Friday, December 28, 2001 Parallel District Court and ITC Patent Infringement Actions and PTO Interferences
Sunday, April 1, 2001 First-to-File or First-to-Invent?
Friday, December 1, 2000 Why 35 USC 146 Practice Should Boom
Friday, December 1, 2000 Producing a Witness in an Interference for Cross-Examination Abroad
Monday, May 1, 2000 A Critique of Recent Opinions of the Federal Circuit in Patent Interferences
Saturday, April 1, 2000 Will Inter Partes Reexamination Be Embraced By Third Parties as an Alternative to Litigation?
Wednesday, March 1, 2000 The Black Hole of the Interference System
Wednesday, December 1, 1999 The Decisions of the Board in An Interference Are Entitled to Issue-Preclusive Effect in a Parallel Patent Infringement Action But Not Vice Versa
Wednesday, September 1, 1999 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Saturday, May 1, 1999 You Can Use Interferences to Save Big Bucks in Patent Litigation
Tuesday, December 1, 1998 Multi-Patent Interference
Tuesday, December 1, 1998 What's Left of In Re Braat After In Re Berg?
Sunday, November 1, 1998 Why Are 35 USC 146 Actions Becoming So Popular?
Thursday, October 1, 1998 Is the Declaration of an Interference a Ticket to Ride to the End of the Line?
Wednesday, July 1, 1998 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Friday, May 1, 1998 The BPAI and the TTAB are Required to Set Forth Specific Findings of Fact and Conclusions of Law Adequate to Form a Basis for Appellate Review
Thursday, January 1, 1998 The Law and Practice Under 35 USC 135(c)
Thursday, January 1, 1998 Patent Interferences -- Big Ticket Litigation With No Effective Discovery
Wednesday, January 1, 1997 Patent Law Roundtable: Discovery Interference
Wednesday, January 1, 1997 A Critique of Recent Opinions of the Federal Circuit in Patent Interferences
Wednesday, January 1, 1997 Proposed Changes to the Interference Rules
Wednesday, January 1, 1997 A Critique of Recent Opinions of the Federal Circuit in Patent Interferences
Monday, January 1, 1996 Investive Versus Divestive Actual Reductions To Practice
Monday, January 1, 1996 Practicing Under The New Patent Interference Rules And New Rule 131
Sunday, January 1, 1995 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Sunday, January 1, 1995 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Saturday, January 1, 1994 What Article 1709(7) Of NAFTA Will Mean To Canadian Practitioners
Friday, January 1, 1993 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Friday, January 1, 1993 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Tuesday, January 1, 1991 How The United States Currently Handles The Interference Issues That Will Remain In A First-To-File World
Monday, January 1, 1990 Jurisdiction Of The Board Of Patent Appeals And Interferences To Decide Infringement Questions Under The Doctrine Of Equivalents
Monday, January 1, 1990 A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences
Sunday, January 1, 1989 Comment: Why First-To-File Should Not Mean The End of Interferences
Thursday, January 1, 1987 Old Rule Interferences After The Promulgation Of The New Rules
Wednesday, January 1, 1986 Compelled Testimony, Testimony Abroad, and Protective Orders in Interference Proceedings Under the New Rules
Tuesday, January 1, 1985 The Impact of Statutory Invention Registrations on Interference Practice
Tuesday, January 1, 1985 CAFC Reviews Of Interlocutory Decisions
Tuesday, January 1, 1985 Choice Of Law In The United States Circuit Court Of Appeals For The Federal Circuit
Tuesday, January 1, 1985 Willful Infringement and "Magic Words" -- The Effect of Opinions of Counsel on Awards of Increased Damages and Attorney Fees
Sunday, January 1, 1984 Collateral Estoppel Effect of Decisions by the Board of Patent Interferences
Saturday, January 1, 1983 Best Mode -- Intent to Conceal
Saturday, January 1, 1983 Board Of Appeals Jurisdiction Over Appeals From Decisions By Primary Examiners Refusing To Institute Interferences On Modified Or Phantom Counts
Friday, January 1, 1982 Failure To Perfect Claim To Priority During Pendency Of First-Filed U.S. Patent Application
Thursday, January 1, 1981 Review of Decisions Striking Patent Applications for Fraud
Monday, January 1, 1979 "Establishing the Time the Invention Was Made" in Non-Obviousness: The Standard of Patentability in the United States
Sunday, January 1, 1978 The Law of Double Patenting in the CCPA
Saturday, January 1, 1977 Patent And Trademark Jurisdiction Of The Court Of Customs And Patent Appeals -- Part II (Conclusion)
Monday, January 1, 1973 The Defense of Patent Invalidity In Tarrif Commission Patent Actions
Monday, January 1, 1973 Patent And Trademark Jurisdiction Of The Court Of Customs And Patent Appeals -- Part 1
Monday, January 1, 1973 Events 2009 Annual Meeting
Thursday, October 15, 2009 Intellectual Property Law Association of Florida Meeting
Monday, March 16, 2009 19th Annual PTO Day
Monday, December 1, 2008 2008 OPLA / WSPLA Annual Seminar
Friday, April 11, 2008 Presentations Derivation Law and Derivation Proceedings
Saturday, October 22, 2011 Prior User Rights
Saturday, October 22, 2011 Using a Suggestion of Interference as a Vehicle to Challenge a Competitor's Patent Application
Thursday, June 16, 2011 The Most Interesting Interference Opinions of 2007
Wednesday, February 6, 2008 Proposed Changes To The Interference Rules
Wednesday, April 2, 1997 |