Wolfgang Schönig

Deutsche Version

Wolfgang Schönig is a partner of Morrison & Foerster (International) LLP based in our German office in Berlin. His practice specialty is advising on IP aspects relative to transactions in the digital, telecoms, high tech, life sciences, and pharmaceuticals industry, as well as legal representation in IP disputes.

Mr. Schönig is specialized in research and development collaborations, complex licensing agreements, technology acquisitions, know-how protection strategies, and employee invention law. He also has substantial experience in litigating patents, trademarks and other intellectual property assets, often in a multi-jurisdictional context. In addition, Mr. Schönig and his team frequently clear trademarks and ad campaigns and prosecute trademark applications.

Mr. Schönig earned his doctor’s degree from Heinrich Heine University in Düsseldorf and his LL.M. degree from the Fordham School of Law in New York, both with a strong focus on intellectual property law. In addition, he earned an MBA from the European University in Barcelona.

Representative Transactional Matters

• Advice to a leading German seed producer on the drafting and negotiating of complex licensing and development agreements, including gene licensing and licensing of genome editing technologies (e.g., CRISPR).
• Structuring and negotiation of technology aspects of a high-stake multi-partner cooperation to establish a GDPR-proof single sign-on solution for the European market.
• Provision of regular assistance with tech law issues to a Berlin-based serial company builder, helping leading German industrials to launch innovative mobility, digital health and other Industry 4.0 projects.
• Structuring and negotiation of diverse global patent and know-how license agreements in the areas of pharmaceuticals, medical devices, defense and telecommunications, and drafting of correlating supply and distribution agreements.
• Structuring of IP rights in connection with joint ventures and other M&A transactions, including, most notably, the IP lead in the carve-out of a patent-heavy semiconductor business comprising nine jurisdictions into a German-US joint venture.
• Advice on government-funded, multi-partner R&D projects and/or R&D projects with academic institutions as well as on employee invention law.

Representative Contentious IP Matters

• Advice to German provider of DSL technologies in highly contentious FRAND negotiations with U.S. patent troll, including advice on determination of FRAND rates under evolving German case law.
• Representation of diverse pharmaceutical and life sciences companies in national and cross-border patent infringement proceedings and other technology-related disputes, including preliminary injunctions as well as pre‑trial discovery and inspection proceedings, concerning, inter alia, drug coating technologies, toner cartridges, medicinal gases, transgenic plants, and vaccines.
• Conducting of trademark, copyright and false advertising litigation, including, most notably, a high-profile trademark litigation for a German bank, and a nine country cross-border trademark litigation involving a famous pharmaceutical brand.
• Border seizure measures and trade fair disputes in the areas of household appliances, cosmetics, and sanitary installations; anti-counterfeiting strategies.