William L. Warren

William L. Warren: Attorney with Eversheds Sutherland (US) LLP

Biography

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 is chair of the firm’s biotechnology and life sciences team, and previously led Eversheds Sutherland (US)’s Intellectual Property Practice Group. 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.

Awards and Rankings

Selected for inclusion in IP Starsby Managing Intellectual Property (2013-2018)

Named among “Georgia’s Legal Elite” by Georgia Trend magazine (2007)

Selected for inclusion in Georgia Super Lawyers “Rising Stars” (2005-2006)

Experience

“We have a very broad and deep pool of attorneys. We represent a variety of technologies-chemistry, chemical engineering, organic chemistry, electro-chemistry, biology, molecular biology, toxicology, pharmacology and medicine-and we have Ph.D.'s and Master’s degrees in an array of technologies.”

Experience

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.
Develops patent portfolio and product clearance strategies for a medical device client for orthopedic implants.
Helps a leading public research university patent diuretic modulators.
Represents a veterinary medical device and technology company in stem cell patenting.
Provides patent clearance opinions to a biotechnology-based pharmaceutical company and represented the company in a patent infringement action brought by a branded pharmaceutical company.
Provides patent opinion and litigation services to a global specialty pharmaceutical and medication delivery company.
Advises a veterinary medical device and technology company on developing a joint and connective tissue repair patent portfolio.

News

In the News

The Hatch-Waxman Act: A Patent Infringement Liability Loophole (December 30, 2015)
Pharmaceutical Processing
Partner William Warren is featured in a Q&A with Pharmaceutical Processing. In the article, Bill discusses a recent Federal Circuit ruling in Momenta Pharmaceuticals v. Teva Pharmaceuticals, Inc., ...

New Protein Clouds IP Landscape for CRISPR (October 6, 2015)
Genetic Engineering & Biotechnology News (GEN)
Partner William Warren is quoted in this GEN article regarding the discovery of Cpf1, a new slicing protein for CRISPR’s genome-editing system, and whether it will affect the legal battle over patent ...

Press Releases

11 Eversheds Sutherland Colleagues Recognized as Global IP Stars (May 18, 2018)
Eversheds Sutherland is pleased to announce that 11 colleagues across five jurisdictions have been recognized as “Global IP Stars” by Managing Intellectual Property magazine. Established in 1996, ...

13 Sutherland Attorneys Named Rising Stars by Georgia Super Lawyers (October 3, 2005)
ATLANTA (October 3, 2005) - Sutherland Asbill & Brennan LLP is proud to announce that 13 of its attorneys have been named to the 2005 list of Georgia Super Lawyers Rising Stars as published in ...

Publications

“It is rewarding to work in the healthcare sector because ultimately you’re allowing new technologies to be commercialized so that they’re available to help people. Otherwise, just like many other endeavors, if there’s no commercial incentive, if there’s no patent protection, the invention or good idea never sees the light of day. It’s just all the more important, I think, in healthcare that new technologies and ideas are protected and made available.”

Legal Alerts

Legal Alert: Supreme Court Limits 271(f)(1) Overseas Infringement Reach: More than One Exported Component Required for Offshore Manufacturing Liability (February 23, 2017)
Summary The US Supreme Court held in Life Techs. Corp. v. Promega Corp., Slip No. 14-1538 (Feb. 22, 2017) that supplying a single component of a multi-component invention manufactured abroad does not ...

Legal Alert: Stay Out of the Weeds: Egregious, Not Garden-Variety, Patent Infringement Is Subject to Enhanced Damages (June 15, 2016)
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. ...

Legal Alert: Implementing the Whistleblower Immunity Notice Provision under the Recently-Enacted Federal Defend Trade Secrets Act (May 18, 2016)
The Defend Trade Secrets Act, signed into law on May 11, 2016, includes a whistleblower immunity notice provision. An employer that wants to preserve maximum recoveries for misappropriation against ...

Legal Alert: UPDATE: Federal Defend Trade Secrets Act Signed Into Law; Employers May Need to Notify Employees (May 12, 2016)
After overwhelming passage in both the House and Senate, President Obama signed the Defend Trade Secrets Act into law on May 11, 2016. The Act provides a truly uniform, nationwide set of standards ...

Legal Alert: UPDATE: Federal Defend Trade Secrets Act Clears the House, Passage into Law Expected (April 28, 2016)
As expected, overwhelming support for the Defend Trade Secrets Act of 2016 led to its passage in the U.S. House of Representatives yesterday by a 410-2 vote. During the floor debate, one Congressman ...

Legal Alert: Federal Defend Trade Secrets Act Clears the Senate: Is the Uniform Act on Life Support? (April 11, 2016)
The U.S. Senate has unanimously approved a bill increasing the protections available to companies for their commercial secrets. The Defend Trade Secrets Act of 2016 (DTSA or the Act) provides for the ...

Legal Alert: Patent Infringement Safe Harbor and Importation Redefined: Ruling Incentivizes Generic Pharmaceutical Offshore Product Testing (November 12, 2015)
A recent ruling by the U.S. Court of Appeals for the Federal Circuit has provided an apparent loophole for manufacturers to avoid infringement liability for conducting patented manufacturing quality ...

Legal Alert: De Novo Review of Claim Construction No Longer the De Facto Standard (January 21, 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 ...

Legal Alert: New Patent Eligibility Guidance: USPTO Tones Down the Rhetoric (December 18, 2014)
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: ...

Legal Alert: It Takes One to Infringe: Akamai Ruling Holds That Induced Infringement Requires Direct Infringement by a Single Party (June 2, 2014)
On June 2, 2014, a unanimous U.S. Supreme Court held in Limelight Networks, Inc. v. Akamai Technologies, Inc. that direct infringement by a single party is a prerequisite to a finding of induced ...

Articles

New Year’s Resolutions for Pharma: Review Production Procedures for IP Opportunities (February 1, 2016)
Pharmaceutical Compliance Monitor
In an article published by Pharmaceutical Compliance Monitor, Sutherland Partner William Warren suggests as a New Year’s resolution that pharmaceutical companies review compliance and quality control ...

Federal Circuit Incentivizes Offshore Generic Drug Testing (November 13, 2015)
Law360
In their article for Law360, Sutherland attorneys William Warren, David Wigley and Rich Seeger discuss a recent decision by the U.S. Court of Appeals for the Federal Circuit in Momenta ...

Evolving Standards for Patent Infringement Liability (November 1, 2013)
Reprinted with permission from Genetic Engineering & Biotechnology News.
Building upon a 2011 decision of the U.S. Supreme Court addressing the intent requirement for inducing patent infringement, the Court of Appeals for the Federal Circuit recently clarified in Commil ...

Do Patents Control Self-Replicating Technologies? (May 1, 2013)
Reprinted with permission from Genetic Engineering & Biotechnology News

Isolated Genes Remain Patentable: Federal Circuit Revisits Issue in Light of Supreme Court’s Mayo Ruling (November 1, 2012)
Reprinted with permission from Genetic Engineering & Biotechnology News, Vol. 32, No. 19

Law of Nature or Patentable Discovery? (May 1, 2012)
Reprinted with permission from Genetic Engineering and Biotechnology News

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)
Reprinted with permission from Genetic Engineering and Biotechnology News

Biotechnology Patent Validity in Jeopardy: Recent Decisions on Qualifying Subject Matter Weaken Enforceability of Method Claims (October 1, 2010)
Reprinted with permission from Genetic Engineering & Biotechnology News

Patent Law Reform in the Works Again (May 1, 2010)
Reprinted with permission from Genetic Engineering & Biotechnology News

Presentations

“Certainly, the sequencing of genes and disease-associated mutations for use in developing diagnostic probes and assays provides useful non-naturally occurring subject matter which should qualify for patentability.”

Presentations

SEMDA Annual Conference (March 13, 2012)
Southeastern Medical Device Association
Sutherland Partner Bill Warren is speaking at the Southeastern Medical Device Association's (SEMDA) Annual Conference, March 13-14, 2012 at the Georgia Tech Global Learning Center in Atlanta, ...

Overview of U.S. and International Patent Process (May 14, 2010)
Urologic Invention Convention
Sutherland Partner William L. Warren is speaking at the inaugural Urologic Invention Convention, May 14, 2010, at the Georgia Tech Hotel and Conference Center in Atlanta, Georgia. Bill is presenting ...

2009 BIO International Convention (May 18-21, 2009)
Sutherland is a proud sponsor of the 2009 BIO International Convention, May 18-21, 2009, in Atlanta, Georgia. Sutherland is also a co-sponsor of the convention’s Think & Drink Discussion Forum and ...

Start-Up Boot Camp (November 2008)
Cornell University
Sutherland Partner William L. Warren is presenting at Start-Up Boot Camp, Cornell University.

Biotech Entrepreneurship, University of Georgia (January 2007)
Sutherland Partner William L. Warren is presenting at Biotech Entrepreneurship, University of Georgia.

Provisional Patent Strategies, Association of University Technology Managers (AUTM) Regional Conference (November 2006)
Sutherland Partner William L. Warren is presenting at the Provisional Patent Strategies, Association of University Technology Managers (AUTM) Regional Conference in November 2006.

Corporate Intellectual Property in China 2006 (April 20-21, 2006)
Sutherland is a lead sponsor of Corporate Intellectual Property in China 2006. The conference was held at The Portman Ritz-Carlton in Shanghai, China from April 20, 2006 to April 21, 2006 ...

Provisional Patents: To File Or Not To File (December 1, 2005)
AUTM Graduate Course

Second Annual Southeast Workshop on Tissue Engineering and Biomaterials (February 11-12, 2005)
Sutherland is proud to be a sponsor of the Second Annual Southeast Workshop on Tissue Engineering and Biomaterials, hosted by the University of Alabama at Birmingham. The mission of the workshop is ...

Georgia Biomedical Partnership's Annual Award Dinner and 15th Anniversary Celebration (January 19, 2005)

Areas of Practice (12)

  • Intellectual Property
  • Biotechnology & Life Sciences
  • Copyrights
  • Energy & Clean Technology
  • Intellectual Property Litigation
  • IP Licensing & Transfers
  • Medical Devices
  • Patents
  • Pharmaceuticals
  • Trade Secrets
  • Trademarks & Service Marks
  • Cannabis

Education & Credentials

Contact Information:
University Attended:
Middlebury College, B.A., Biology and Economics, cum laude; Emory University School of Business, M.B.A.; Georgia State University, M.S., Molecular Genetics, 1995
Law School Attended:
Emory University School of Law, J.D., Member, Moot Court Society
Year of First Admission:
1993
Admission:
U.S. Court of Appeals for the Eleventh Circuit; Court of Appeals of Georgia; Superior Court of Fulton County Georgia; U.S. District Court for the Northern District of Georgia; U.S. Patent and Trademark Office; U.S. Court of Appeals for the Federal Circuit; 1993, Georgia; Supreme Court of Georgia
Memberships:

Professional Activities

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
General Counsel and Board Member, Georgia Biotechnology Industry Organization
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

Birth Information:
Atlanta, Georgia, February 4, 1966
ISLN:
900707535

Peer Reviews

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Documents (35)

Documents by this lawyer on Martindale.com

Atlanta, Georgia

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