Hamilton Herald Masthead


Front Page - Friday, March 25, 2022

From 3D printers to rock crushers

Weidlich’s IP practice filled with ‘wows’

Intellectual property attorney Paul Weidlich has seen a thing or two in his 22 years of practice that made him say, “Wow.”

This included the time he helped a client obtain a patent in the 3D printing space. And the e-commerce patent he helped to secure.

Both inventions were on the cutting edge at the time and impressed Weidlich with their innovation.

“I kicked myself in the head and thought, ‘Why didn’t I think of this?’” Weidlich, 54, laughs.

Weidlich has also seen a thing or two that made him go, “Hmmm.”

“A client invented a mud flap I thought would go nowhere fast. But he wound up selling the patent for seven figures,” he boasts. “Clients often bring me things I think will never cross the finish line but somehow they do.”

Impressing Weidlich isn’t easy at this stage in his career – not because he’s jaded but because he simply plays in a very big sandbox that contains some very large toys.

Weidlich’s principal patent client, for example, builds rock crushers, burners and asphalt plants that are far more complex than the average commuter might realize.

As if those machines weren’t complex enough, Weidlich has also acquired patents for their control systems.

“I’ve had the good fortune of working with a lot of talented engineers and a lot of smart entrepreneurs who have come up with interesting ideas,” he says.

Weidlich works on more than patents as he helps clients bring their visions to market. Trademarks, copyrights, trade secrets, licensing and more (or, as Weidlich puts it, “all kinds of stuff”) are in his wheelhouse.

This might prompt one to ask what qualifies Weidlich to do the work he does. How can someone who spent law school buried in books and his career elbow deep in statutes help to place a mobile asphalt plant on an interstate or hang a mud flap behind the wheels of a semi-truck?

It started with an undergraduate degree in engineering.

“I was more of a math-and-science person than an English-and-writing person,” Weidlich explains. “And my folks encouraged me to do something they thought would be useful down the road.”

The New Jersey-born Weidlich decided to go to law school while completing an internship with an engineering firm during his sophomore year at Lafayette College in Easton, Pennsylvania.

“I learned I didn’t want to work for an engineering firm,” he recalls without elaborating. “My next internship was at a law firm – and those guys were a lot more like me. So, I went to law school.”

After earning a law degree at George Washington University in Washington, D.C., Weidlich returned to New Jersey and became a litigator.

Seven years later, he’d had enough, he says, and changed direction.

“I decided to listen to everyone who told me I could sit for the patent bar and become of the few folks who can prosecute patent applications.”

Weidlich spent the next 22 years doing IP work at Chambliss, Bahner & Stophel in Chattanooga. Although he lost his New Jersey accent over time (it now comes out only when he’s mad, he says), he gained experience and expertise in his field as he worked with clients in a variety of industries.

In 2021, Best Lawyers in America recognized the quality of Weidlich’s practice when it named him Chattanooga’s Patent Lawyer of the Year.

Weidlich also caught the eye of Miller & Martin, where he now works as part of the firm’s Intellectual Property Practice Group.

He says the depth of education within the group and the breadth of its practice appealed to him.

“We have IP attorneys with mechanical engineering degrees, civil engineering degrees, environmental engineering degrees, materials science and engineering degrees and electrical and computing engineering degrees. We also have a guy who holds an undergraduate degree in mathematics.”

Weidlich says Miller & Martin’s geographical footprint also interested him.

“We have patent lawyers in Chattanooga, Atlanta, Nashville and Charlotte, so our client base is regional.”

Weidlich joins the group in helping clients tackle the IP issues companies, entrepreneurs and inventors commonly face as they compete to bring ideas to the world and claim a niche in an ever-tightening marketplace.

Although IP infringement cases are hardly new, Weidlich says he believes they’re trending upward.

“The infringement practice at Miller & Martin is very active. A major player in the fitness industry even served a local client of mine with a cease-and-desist letter. After we responded, another major player in the fitness industry hit the first major player with an infringement suit, which gave them bigger fish to fry.”

Weidlich says he’s also seeing a lot of Section 101 rejections, which essentially claim the applicant has not produced a viable invention.

“Those say your invention is nothing more than an idea,” Weidlich explains. “Those often come into play with business method patent applications and software patent applications. The patent office is saying, ‘You don’t have an invention. We don’t need to tackle the question of whether your invention is new or useful or a modification of something that’s already out there.’”

Weidlich notes that the e-commerce application for which he helped to secure a patent was initially rejected on these grounds.

“They basically said it was a bunch of computer code and not an invention someone could hold in their hands. We went back and forth and back and forth until I finally wore down the examiner and they said OK.”

All of that said, nothing challenges an IP attorney as ferociously as a trademark that can’t find any footing, Weidlich says.

An oversaturated marketplace is to blame for what can feel like an impossible task, he adds.

“Twenty year ago, it was easy to get a trademark for something. But every year, more and more trademark applications are filed, so fewer and fewer trademarks are available. It just gets tougher and tougher.

Weidlich says the best way to avoid IP entablements is to consult with an attorney as early in a venture as possible.

“Especially talk with a patent attorney before you make a public disclosure of your invention. That happens all too often – and it can prevent you from ever getting patent rights.

“If a client doesn’t tell you about their public disclosure and you take the patent application across the finish line, potential infringers can claim the patent isn’t worth the paper on which it’s printed.”

When Weidlich isn’t busy helping his clients avoid these and other pitfalls, or doing the legal legwork required to bring ideas to market, he’s enjoying time on the beach with his wife, playing Texas Hold ‘em with his two sons or donating his time and expertise to a number of local organizations.

Among these are the Chattanooga International Business Council, for which Weidlich sits on the board of directors, and the Early Innovator Award Committee at CHATech, for which he serves as chair.

Even in these moments, his thoughts remain primed for the next time something crosses his desk and makes him say, “Wow.”