ATTORNEY BIOGRAPHY William L. Warren Partner Atlanta P: 404.853.8081 E: bill.warren@sutherland.com Education J.D., Emory University School of Law, Member, Moot Court Society M.B.A., Emory University School of Business M.S., Molecular Genetics, Georgia State University B.A., cum laude, Biology and Economics, Middlebury College Bar Admissions Georgia U.S. Patent and Trademark Office Background 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 Sutherland 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. 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.
PAGE 2 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. Awards Selected for inclusion in IP Stars by Managing Intellectual Property (2013-2016) Named among Georgia s Legal Elite by Georgia Trend magazine (2007) Selected for inclusion in Georgia Super Lawyers Rising Stars (2005-2006) 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 Articles New Year s Resolutions for Pharma: Review Production Procedures for IP Opportunities (February 1, 2016) Pharmaceutical Compliance Monitor Federal Circuit Incentivizes Offshore Generic Drug Testing (November 13, 2015) Law360
PAGE 3 Evolving Standards for Patent Infringement Liability (November 1, 2013). Do Patents Control Self-Replicating Technologies? (May 1, 2013) Isolated Genes Remain Patentable: Federal Circuit Revisits Issue in Light of Supreme Court s Mayo Ruling (November 1, 2012), Vol. 32, No. 19 Law of Nature or Patentable Discovery? (May 1, 2012) Personalized Medicine Diagnostic Patents (November 2011) Difficulty in Patenting Improved Antibodies: Courts Increasingly Invalidating Claims for Lacking Written Description (May 1, 2011) Biotechnology Patent Validity in Jeopardy: Recent Decisions on Qualifying Subject Matter Weaken Enforceability of Method Claims (October 1, 2010) Patent Law Reform in the Works Again (May 1, 2010) DNA - Not Patentable Subject Matter (March 31, 2010) Intellectual Property Law360 Gene Patent Ruling Could Shake Up Biotech (March 30, 2010) Reprinted with permission from Intellectual Property Law360 Certainty Not Required for Inventorship (November 1, 2009) Upcoming Changes to European Patent Examination Procedures (August 2009) Reprinted with permission from Patent Strategy & Management Special Report: Patentability of Genetic Sequences Limited (May 13, 2009) The Third Amendment to the Chinese Patent Law (May 1, 2009) Reprinted with permission from Patent Strategy & Management Is Safe Harbor Closed to Research Tools? (November 1, 2008)
PAGE 4 Redefining Written Descriptions for Patents (October 15, 2008) Abbreviated Approval of Generic Biologics (December 2006) Analysis of a Patent Applicant's Obligations (May 2006) Safe Harbor Provisions for Preclinical Research (August 2005) Currently Evolving Regulatory and Patent Issues Affecting Biotechnology (June 2005) The Evolution of Patent Infringement (April 2005) Reprinted with permission from Corporate Legal Times The Create Act of 2004 (December 10, 2004) Reprinted with permission from Intellectual Asset Management Description Requirements for Patenting Genes (November 1, 2004), Volume 24, Number 19 Presentations SEMDA Annual Conference (March 13, 2012) Southeastern Medical Device Association Overview of U.S. and International Patent Process (May 14, 2010) Urologic Invention Convention 2009 BIO International Convention (May 18-21, 2009) Start-Up Boot Camp (November 2008) Cornell University 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) 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)
PAGE 5 Georgia Biomedical Partnership's Annual Award Dinner and 15th Anniversary Celebration (January 19, 2005) The Genomic Revolution (June 12, 2004 - January 2, 2005) Recent Patent Law Developments in Experimental Use Exceptions (May 4, 2003) The Association for Research in Vision and Ophthalmology Annual Meeting Court Admissions 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