Bill Haulbrook, a leader of Choate’s Digital Biotech and Engineering disciplines, specializes in building comprehensive patent portfolios to support clients’ business objectives in the U.S., Europe, and Asia. Bill also advises technology companies and investors in the licensing of intellectual property, as well as patent infringement analysis, validity, IP landscape analysis, and freedom-to-operate.
Bill has particular expertise in a wide variety of technologies, including medical imaging and diagnostics, digital biotech, artificial intelligence (AI), and other computer software, LEDs and other microelectronics, nanocomposites, advanced materials, battery technology, industrial processes, polymers and composites, energy, semiconductor manufacturing, industrial chemistry, and petroleum processing.
Bill’s representative engagements include patent portfolio development for technology companies that are acquired or license-out their IP in 8- and 9-figure transactions. Patent portfolio development is geared toward successful competitive positioning of the company, closing funding rounds, company growth, and/or acquisition.
- “IP Star” by Managing Intellectual Property (2016-2020)
- “Top Ten Intellectual Property Lawyers Influencing Nanotechnology” by Nanotechnology Law and Business (2008)
- Ongoing representation of large medical imaging and diagnostics company with respect to IP protection and strategic partnerships.
- Development of patent portfolios for start-ups, venture-backed companies, public companies, and research institutions.
- Advising clients in patent reexaminations, oppositions, and pre-litigation strategies.
- Advising clients in joint development agreements and IP licensing issues.
- Performing IP diligence for clients seeking investor financing.
- Performing IP diligence for inventors interested in technology companies.
Publications and Presentations
- “101 Update & Industry Perspectives – Diagnostics & Bioinformatics,” moderator, BIO IPCC Fall Conference, November 2016.
- “Using Post-Grant Proceedings to Challenge Pharma Patents,” author, IP Law360.
- “A Push by the USPTO for Faster Patent Processing,” author, IP Law360.
- “Walking the Line: Advice for Patent Agents on Interacting with Clients without Direct Attorney Supervision,” panelist, Boston Patent Law Association Seminar, Boston.
- “Clean Energy Fellowship Program,” panelist, New England Clean Energy Council, Boston.
- “Strategic Choices in Nanotech Funding and IP Protection,” moderator, Nano Science and Technology Institute Conference, Boston.
- “Nanotechnology: Strategies for Securing and Protecting Patents and Copyrights,” panelist, Strafford Publications CLE Teleconference.
- “Nanotech Patents: Tips for Getting the Patent Protection You Need,” co-author and presenter, Nano Science and Technology Institute Conference, Santa Clara.
- “Getting a Handle on the Software Patent Explosion,” author, IPFrontline, Patent Strategy and Management.
Education & Credentials
University of North Carolina School of Law
JD, 2001, cum laude
Massachusetts Institute of Technology
PhD, 1993, Chemical Engineering
University of South Carolina
U.S. Patent & Trademark Office
Managing IP recently recognized six Choate partners - Robert S. Frank Jr., Dr. William R. Haulbrook, Dr. Brenda Herschbach Jarrell, Dr. Charles Lyon, Eric J. Marandett, and Dr. Rolando Medina – in its 2021 guide of “IP Stars.”
Six partners – Robert S. Frank Jr., Dr. William R. Haulbrook, Dr. Brenda Herschbach Jarrell, Dr. Charles Lyon, Eric J. Marandett, and Dr. Rolando Medina– have been included in the Managing Intellectual Property Magazine global 2020 rankings of “IP Stars.”
Choate advised Progenics Pharmaceuticals, Inc. (Nasdaq:PGNX), an oncology company developing innovative medicines and artificial intelligence to find, fight, and follow cancer, and EXINI, a wholly owned subsidiary of Progenics, in its transfer agreement with FUJIFILM Toyama Chemical Co, Ltd. (FFTC) for the rights to Progenics’ Automated Bone Scan Index (aBSI) product in Japan for use under the name BONENAVI. BONENAVI has been licensed to FFTC for use in Japan since 2011.
Six Choate partners – Bob Frank, Dr. William Haulbrook, Dr. Charles Lyon, Dr. Brenda Herschbach Jarrell, Eric Marandett, and Dr. Rolando Medina – have been singled out by Managing Intellectual Property Magazine as Global “IP Stars” on the publication’s annual list of the world’s leading intellectual property attorneys.
Four Choate partners – Dr. William Haulbrook, Dr. Charles Lyon, Dr. Brenda Herschbach Jarrell, and Eric Marandett – have been singled out by Managing Intellectual Property Magazine as Global “IP Stars.