- Intellectual Property
- Biotechnology & Life Sciences
- Energy & Clean Technology
- Intellectual Property Litigation
- Trademarks & Service Marks
- IP Licensing & Transfers
- Medical Devices
- Trade Secrets
|Contact Info||Telephone: 404.853.8081|
|University ||Middlebury College, B.A., Biology/Economics, cum laude; Emory University School of Business, M.B.A.; Georgia State University, M.S., Molecular Genetics, 1995|
|Law School||Emory University School of Law, J.D. Member, Moot Court Society|
|Admitted||1993, Georgia; U.S. Court of Appeals for the Federal Circuit; U.S. Court of Appeals for the Eleventh Circuit; U.S. District Court for the Northern District of Georgia; Supreme Court of Georgia; Court of Appeals of Georgia; Superior Court of Fulton County Georgia; U.S. Patent and Trademark Office|
Vice-Chair, Intellectual Property Owners Committee, Genetic Resources and Traditional Knowledge Member, American Bar Association
Member, Atlanta Bar Association
Member, State Bar of Georgia, Intellectual Property Law Section
Member, Board of Directors, Georgia Biotechnology Industry Organization (GaBio)
Member, American Intellectual Property Law Association
Member, Intellectual Property Owners Association
Member, Bioscience Leadership Council, Metro Atlanta Chamber of Commerce
Member, Licensing Executives Society
Member, Association for University Technology Managers
Member, Board of Councilors, The Carter Center
Trustee, Chi Psi Fraternity Educational Trust
Trustee, Fernbank Museum of Natural History
|Born||Atlanta, Georgia, February 4, 1966|
Bill Warren advises clients on strategic intellectual property issues primarily in the life sciences sector, but also in a number of other industries. The majority of his practice focuses on patents related to biotechnology, medical device and pharmaceutical inventions. Bill prosecutes patents, counsels clients on patent validity and infringement issues and prepares product clearance opinions and development strategies. He also negotiates technology transfer licensing agreements and conducts intellectual property due diligence.
Bill currently leads Sutherland's Intellectual Property Practice Group and is chair of the firm's biotechnology & life sciences team. He also protects trademarks and copyrights and, when necessary, participates in litigating intellectual property issues. In particular, he counsels various entities on Hatch-Waxman generic pharmaceutical and related biosimilars issues. For more than two decades, Bill has worked with clients ranging from multinational corporations, to early-stage entrepreneurial companies, to nonprofit university and science research centers. He is a frequent speaker and writer on developments in patent law affecting the life sciences industry.
Conducted freedom-to-operate analyses for the commercialization of therapeutic recombinant proteins and monoclonal antibodies for a global specialty pharmaceutical company.
Completes diligence on the acquisition and licensing of bead-based molecular bioarray nucleic acid detection platform technology.
Advises a medical device company on patenting cardiovascular access and closure products.
Awards and Rankings
Selected for inclusion in IP Stars by Managing Intellectual Property (2013)
Named among “Georgia's Legal Elite” by Georgia Trend magazine (2007)
Selected for inclusion in Georgia Super Lawyers “Rising Stars” (2005-2006)
Documents by this lawyer on Martindale.com
De Novo Review of Claim Construction No Longer the De Facto Standard
Ann G. Fort,Robert R.L. Kohse,William L. Warren,David E. Wigley, February 13, 2015
On January 20, the U.S. Supreme Court, in Teva Pharmaceuticals USA, Inc. v. Sandoz, rejected the de novo review standard applied by the U.S. Court of Appeals for the Federal Circuit when reviewing all claim construction issues. The Supreme Court held that, when reviewing a District Court’s...
New Patent Eligibility Guidance: USPTO Tones Down the Rhetoric
Jana Nelson,William L. Warren, February 6, 2015
On December 15, 2014, the U.S. Patent and Trademark Office issued its long-awaited Interim Guidance on Patent Subject Matter Eligibility (published in the Federal Register on December 16, link here: [(79 Fed. Reg. 74618)]). The Guidance supersedes the guidelines for determining patent eligibility...
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