Bill Warren, a member of Sutherland's Intellectual Property Practice Group and chair of the firm's Biotechnology and Life Sciences Team, focuses his practice on patents and licensing for biotechnical, biomedical, pharmaceutical and biomechanical engineering inventions. For almost two decades, he has worked with clients ranging from nonprofit university and research centers to early-stage entrepreneurial companies to multi-national life sciences corporations. A significant portion of Bill's practice includes patent prosecution, counseling clients on patent validity and infringement issues and the preparation of formal product clearance opinions. He also has successfully negotiated technology transfer licensing agreements on behalf of organizations of all sizes. Bill also protects trademarks and copyrights and, when necessary, litigates intellectual property issues. Bill provides leadership to Sutherland's Biotechnology Patent Team, the majority of whose members also have graduate degrees in the life sciences, and he is Deputy Practice Group Leader for the firm's Intellectual Property Group. He also serves on the firm's Hiring Committee and Business Development Committee. Bill serves as a frequent speaker and author on developments in intellectual property law, particularly those affecting the life sciences industry. Bill is registered to practice before the U.S. Patent and Trademark Office. Representative Experience Bill's broad representative experience includes the following: · Helping a biotherapies research company protect its laboratory techniques and cell culture media for the generation of human pluripotent embryonic stem cells. · Creating a robust patent portfolio and licensing program for a company with a unique vaccination technology platform. · Conducting comprehensive due diligence of a molecular bioarray diagnostic patent and licensing portfolio for acquisition. · Prosecuting patents for a multi-national agriculture company that develops genetically engineered plants resistant to disease, salt, freezing and drought. · Assisting a cardiovascular medical device company protect implantable prosthetic heart valves and delivery means. · Providing intellectual property counsel to a company licensing patents for a variety of disease-associated biomarkers and cellular receptors. · Performing freedom-to-operate analyses for commercialization of therapeutic recombinant proteins and monoclonal antibodies. · Counseling a diagnostic laboratory on the patentability of novel genetic comparative analyses to detect disease states and vaccination efficacy. · Assisting numerous universities in patenting a broad array of research tools to enable further discoveries. Professional Honors and Awards · Named among "Georgia's Legal Elite" by Georgia Trend magazine (2007) · Selected for inclusion in Georgia Super Lawyers® "Rising Stars" (2006) Professional and Community Involvement · Member, American Bar Association · Member, Atlanta Bar Association · Member, State Bar of Georgia, Intellectual Property Law Section · Member, Georgia Biotechnology Industry Organization (GaBio) · Member, American Intellectual Property Law Association · Member, Intellectual Property Owners Association · Member, Licensing Executives Society · Member, Life Sciences Committee, Bioscience Leadership Council, Metro Atlanta Chamber of Commerce · Member, Association for University Technology Managers · Member, Board of Councilors, Carter Center · Trustee, Chi Psi Fraternity Educational Trust · Founding Member, Corporate Leadership Council of the Fernbank Museum of Natural History Recent Publications and Speaking Engagements · Co-author, "Personalized Medicine Diagnostic Patents," Genetic Engineering and Biotechnology News (November 2011) · Co-author, "Difficulty in Patenting Improved Antibodies: Courts Increasingly Invalidating Claims for Lacking Written Description," Genetic Engineering & Biotechnology News (May 1, 2011) · Co-author, "Biotechnology Patent Validity in Jeopardy: Recent Decisions on Qualifying Subject Matter Weaken Enforceability of Method Claims," Genetic Engineering and Biotechnology News (October 1, 2010) · Author, "Patent Law Reform in the Works Again," Genetic Engineering & Biotechnology News (May 1, 2010) · Co-author, "DNA - Not Patentable Subject Matter..." Intellectual Property Law360 (March 31, 2010) · Author, "Gene Patent Ruling Could Shake Up Biotech," Intellectual Property Law360 (March 30, 2010) · Co-author, "Certainty Not Required for Inventorship," Genetic Engineering & Biotechnology News (November 2009) · Co-author, "Upcoming Changes to European Patent Examination Procedures," Patent Strategy & Management (August 2009) · Co-author, "Special Report: Patentability of Genetic Sequences Limited," Genetic Engineering & Biotechnology News (May 13, 2009) · Co-author, "The Third Amendment to the Chinese Patent Law," Patent Strategy & Management (May 1, 2009) · Co-author, "Is Safe Harbor Closed to Research Tools?" Genetic Engineering and Biotechnology News, Volume 28, Number 19 (November 1, 2008) · Co-author, "Redefining Written Descriptions for Patents," Genetic Engineering and Biotechnology News, Vol. 28, No. 18 (October 15, 2008) · Co-author, "Abbreviated Approval of Generic Biologics," Genetic Engineering News (December 2006) · Co-author, "Analysis of a Patent Applicant's Obligations," Genetic Engineering News (May 2006) · Author, "Safe Harbor Provisions for Preclinical Research," Genetic Engineering News (August 2005) · Author, "Currently Evolving Regulatory and Patent Issues Affecting Biotechnology," Genetic Engineering News (June 2005) · Reference, "The Evolution of Patent Infringement," Corporate Legal Times (April 2005) · Co-author, "The Create Act of 2004," Intellectual Asset Management (December 10, 2004) · Co-author, "Description Requirements for Patenting Genes," Genetic Engineering News, Volume 24, Number 19 (November 1, 2004) · Speaker, Southeastern Medical Device Association (SEMDA) Annual Conference, (March 13-14, 2012) · Speaker, "Overview of U.S. and International Patent Process," Urologic Invention Convention (May 14, 2010) · Speaker, "Industry is from Mars and Academia is from Venus: Establishing Successful Collaborative Research Programs," BIO International Conference, Atlanta, Georgia (May 2009) · Speaker, Start-Up Boot Camp, Cornell University (November 2008) · Speaker, Biotech Entrepreneurship, University of Georgia (January 2007) · Speaker, Provisional Patent Strategies, Association of University Technology Managers (AUTM) Regional Conference (November 2006) · Speaker, Corporate Intellectual Property in China 2006 (April 20-21, 2006) · Speaker, "Provisional Patents: To File Or Not To File," AUTM Graduate Course (December 1-3, 2005) · Panelist, Second Annual Southeast Workshop on Tissue Engineering and Biomaterials (February 11-12, 2005) · Speaker, Georgia Biomedical Partnership's Annual Award Dinner and 15th Anniversary Celebration (January 19, 2005) · Speaker, The Genomic Revolution (June 12, 2004 - January 2, 2005) · Speaker, "Recent Patent Law Developments in Experimental Use Exceptions," The Association for Research in Vision and Ophthalmology Annual Meeting (May 2-9, 2003) Industries Biotechnology and Life Sciences Clean Technology Pharmaceutical News Gene Patent Ruling Could Shake Up Biotech
March 30, 2010 Reprinted with permission, Intellectual Property Law360, http://www.law360.com/ Myriad Genetics Comes under Legal Fire for Gene Patents
May 14, 2009 Posted with permission Genetic Engineering & Biotechnology News Legal Alerts Legal Alert: First-to-File or First-to-Invent? New Patent Reform Act Changes the Game
September 13, 2011 Legal Alert: Isolated DNA Molecules Are Patentable Chemical Entities, and Patent-Eligible Diagnostic Methods Must Include Transformational Steps
August 2, 2011 Legal Alert: Induced Patent Infringement Requires Proof of Knowledge that the Induced Acts Infringe
June 1, 2011 Legal Alert: Federal Circuit Tightens Inequitable Conduct Standards: What Does This Mean for Patent Practice in the Future?
May 27, 2011 Legal Alert: New Dependent Claims in Reissue Are Permissible Under In re Yasuhito Tanaka
April 21, 2011 Legal Alert: The Written Description Requirement Revisited, Giving Caution to Biotech Patent Owners
February 28, 2011 Legal Alert: The Supreme Court Adopts Machine-or-Transformation Test as One Test for Patenting Business Methods
June 30, 2010 Legal Alert: False Patent Marking Liability Avoided for Lack of Intent to Deceive
June 17, 2010 Legal Alert: Unique Active Ingredient in Drug Product Can Mean Patent Term Extension
May 17, 2010 Legal Alert: Decision Clarifies Joint Inventorship Requirements
April 14, 2010 Legal Alert: DNA Ruled Not Patentable Subject Matter
March 30, 2010 Legal Alert: Patent Term Adjustment Statute Interpreted by the Federal Circuit
January 13, 2010 Legal Alert: False Patent Marking Statute Requires a per Article Penalty
December 30, 2009 Legal Alert: Federal Circuit: Medical Treatment and Diagnostic Method Claims Are Patentable
September 30, 2009 Legal Alert: Upcoming Changes to European Patent Examination Procedures
June 1, 2009 Legal Alert: Federal Circuit Clarifies Limited Scope of Product-by-Process Claims
May 26, 2009 Legal Alert: Federal Circuit Limits Patentability of Genetic Sequences
April 13, 2009 Legal Alert: Tafas v. Doll
March 27, 2009 Legal Alert: The Third Amendment to the Chinese Patent Law
March 9, 2009 Legal Alert: Patent Term Adjustment Determinations May Be Affected Following District Court Decision
October 30, 2008 Legal Alert: Federal Circuit: Non-Infringement Opinion From Patent Counsel Can Support An Inference of No Inducement to Infringe
September 30, 2008 Legal Alert: Patent Exhaustion Doctrine Re-Charged By Supreme Court: Potential Loss of Control After First Sale Under License
August 21, 2008 Legal Alert: Citing Phillips, Federal Circuit Panel Vacates ITC's Claim Construction
January 7, 2008 Legal Alert: U.S. Supreme Court Facilitates Ability to Challenge Patent Validity
January 11, 2007 Legal Alert: Analysis of a Patent Applicant's Duty of Candor and Good Faith
May 30, 2006 Legal Alert: From IP to IPO 2006 Practical tips When Invoking the CREATE Act
March 1, 2006 Legal Alert: Acacia: Aggressive Licensing Sought For All Digital Streaming Media
August 25, 2004 Publications Personalized Medicine Diagnostic Patents
November 2011 Reprinted with permission from Genetic Engineering and Biotechnology News Difficulty in Patenting Improved Antibodies: Courts Increasingly Invalidating Claims for Lacking Written Description
May 1, 2011 As published in Genetic Engineering and Biotechnology News Biotechnology Patent Validity in Jeopardy: Recent Decisions on Qualifying Subject Matter Weaken Enforceability of Method Claims
October 1, 2010 Posted with permission Genetic Engineering & Biotechnology News Patent Law Reform in the Works Again
May 1, 2010 Posted with permission Genetic Engineering & Biotechnology News DNA - Not Patentable Subject Matter ...
March 31, 2010 Reprinted with permission, Intellectual Property Law360, http://www.law360.com/ Certainty Not Required for Inventorship
November 1, 2009 Reprinted with permission Genetic Engineering & Biotechnology News Upcoming Changes to European Patent Examination Procedures
August 2009 Reprinted with permission Patent Strategy & Management Special Report: Patentability of Genetic Sequences Limited
May 13, 2009 Posted with permission Genetic Engineering & Biotechnology News Is Safe Harbor Closed to Research Tools?
November 1, 2008 Reprinted with permission from Genetic Engineering and Biotechnology News, Volume 28, Number 19 Redefining Written Descriptions for Patents
October 15, 2008 Reprinted with permission Genetic Engineering and Biotechnology News, Vol. 28, No. 18 Abbreviated Approval of Generic Biologics
December 2006 Reprinted with permission, Genetic Engineering News Analysis of a Patent Applicant's Obligations
May 2006 Reprinted with permission, Genetic Engineering News Safe Harbor Provisions for Preclinical Research
August 2005 Reprinted with permission, Genetic Engineering News Currently Evolving Regulatory and Patent Issues Affecting Biotechnology
June 2005 Reprinted with permission, Genetic Engineering News The Evolution of Patent Infringement
April 2005 Posted with permission from Corporate Legal Times The Create Act of 2004
December 10, 2004 Posted with permission from Intellectual Asset Management Description Requirements for Patenting Genes
November 1, 2004 Posted with permission from Genetic Engineering News, Volume 24, Number 19 Events Southeastern Medical Device Association (SEMDA) Annual Conference
March 13-14, 2012 Urologic Invention Convention
May 14, 2010 2009 BIO International Convention
May 18-21, 2009 Start-Up Boot Camp, Cornell University
November 2008 Biotech Entrepreneurship, University of Georgia
January 2007 Provisional Patent Strategies, Association of University Technology Managers (AUTM) Regional Conference
November 2006 Corporate Intellectual Property in China 2006
April 20-21, 2006 AUTM Graduate Course
December 1-3, 2005 Second Annual Southeast Workshop on Tissue Engineering and Biomaterials
February 11-12, 2005 Georgia Biomedical Partnership's Annual Awards Dinner and 15th Anniversary Celebration
January 19, 2005 The Genomic Revolution
June 12, 2004 - January 2, 2005 The Association for Research in Vision and Ophthalmology Annual Meeting
May 2-9, 2003 |