Charles F. Wieland III
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Charles F. Wieland III

Shareholder

Alexandria, VA
 
 
 

Charles (Chad) F. Wieland III focuses his practice on Intellectual Property (IP) matters. He advises clients ranging from startups to Fortune 100 companies, both domestic and international.

With over 27 years of experience, he finds cost effective ways to acquire or capture and exploit worldwide IP rights of clients, while avoiding or mitigating the hazards posed by the IP rights of others.

Chad has advised clients on how to best capture the value of their innovations, prepared and prosecuted utility and design patent applications on a cost effective basis, prosecuted reissue and re-examination applications, as well as inter partes and covered business method review proceedings.

He has experience in exploiting IP rights through licensing, assignment and when necessary, litigation. He helps clients steer clear of interference from the IP rights of others with design-around recommendations, validity, infringement and clearance/freedom-to-operate studies, both formal and informal. He negotiates and drafts software licenses and other technology transfer agreements.

Chad has defended patents in re-examination, inter partes and covered business method review proceedings at the U.S. Patent and Trademark Office, as well as assisted with oppositions in the European Patent Office. He has also been involved with IP issues surrounding standard setting bodies and patent pools, including helping to form policies, acquiring and having standard blocking or essential patents recognized as such by the licensing authority.

Additionally, Chad has experience dealing with non-practicing entities (aka patent licensing entities) and the somewhat unique challenges they pose. He is also an entrepreneur, having started and exited an investment fund.

His approach is to know the business of clients and to find practical, business-oriented solutions to opportunities and problems facing clients. He has helped take clients from inventive concept to $100 million exits.

He has worked with a wide range of technologies, business methods and software, involving e-commerce and targeted advertising, yield management, healthcare records and reimbursement management tools, complex financial instruments and measurement tools, presentation capture and publishing and credit and debit card processing products. He has a strong technical background and experience with inventions involving display devices; MEMs; microfluidics; carbon nanotube production and application in electron emitters and display devices; nano-scale electrical components and nano-scale signal processors and storage devices; clean technology, including fuel cells, smart grid and solar power; transistors; light emitting diodes (LEDs); laser diodes and other semiconductor device structures; optical systems, including cameras, auto focus systems, lens systems, optical fibers and fiber optic switches; optical disc structures, including CD, DVD/CD and DVD players; infrared systems; and magnetic memory structures and materials.

Chad has written and prosecuted many applications on cellular telephony, and other wireless devices (e.g.,IEEE 802.11, FDMA, CDMA, TDMA, PSK, QSK, etc.), planar antennas and other electrical, electronic, electro-mechanical, applied physics and mechanical arts.

He frequently lectures both in the U.S. and abroad on IP related topics, where he provides insights to the examining corps of the USPTO and how to use IP as a business tool and achieve a return on investment.

While an examiner at the USPTO, Chad gained experience in the electrical/radiant energy practice areas, where he examined more than 200 U.S. patents in the areas of optical measuring and testing systems, photocell circuits, CAT scanners and other x-ray imaging systems, x-ray optics and other radiant energy systems, semiconductor device circuits and structures and circuit boards. He has drafted and/or prosecuted thousands of patents and patent applications over his 27-plus years.

He has also managed litigation and discovery, conducted legal research and drafted motions, interrogatories, document requests and requests for admissions and has reviewed documents for production and claims of attorney-client privilege and work product immunity. He also has pro-bono courtroom experience.

Chad was a partner with Burns, Doane, Swecker & Mathis, one of the oldest and largest law firms in the United States focusing exclusively on intellectual property until its lawyers and other professionals joined Buchanan in 2005. He served as the team leader of the Nanotechnology Team and is co-founder of the Atlantic Nano Forum and the Emerging Tech Forum.

Chad has been honored by his peers in the legal community and selected to the Virginia Super Lawyers® list in the area of IP prosecution consecutively from 2007 to 2011, and has been selected by his peers for inclusion in The Best Lawyers in America® under the Litigation – Patent category. He was also recognized in the category of Intellectual Property in the Corporate Counsel Super Lawyers® list. In 2008, Nanotechnology Law & Business named him on its Top Ten list of IP attorneys working in nanotechnology. In 2013 and 2014, Chad was recognized for his work in the Intellectual Property practice as an IP Star by Managing Intellectual Property. He is also a recipient of the American Jurisprudence Award in Professional Responsibility.