Charles L. Gholz
Partner
Tel (703) 412-6485

Charles L. Gholz

Partner

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.

Curriculum Vitae

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).

Martindale-Hubbell® AV® Preeminent™ 5.0 out of 5

Best Lawyers in America (2010 - 2013), named among the best in Intellectual Property Law

Chambers USA (2010 - 2012)

 

Intellectual Asset Management (IAM) Patent 1000: The World's Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world; selected as one of the top eighteen practitioners in the United States for post-grant proceedings and is a “Recommended” patent attorney in the Washington, D.C. Metro Area for his patent prosecution and interference expertise  (2012)

Legal 500 U.S., recognized as a prominent practitioner (2012)

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)