Sebastian Wündisch, LLM

Rechtsanwalt (Lawyer), Partner

Intellectual Property
Automotive & New Mobility
Life Sciences

Sebastian Wündisch

Sebastian is an internationally recognised lawyer in intellectual property, technology transfer and licensing. Another focus is the structuring of complex research collaborations and negotiation of R&D contracts. He also has in-depth experience in dealing with IP and licences in restructuring and insolvency scenarios. His clients include technology-driven companies, including global players, Dax40 companies, medium-sized companies and start-ups, insolvency administrators as well as universities and research organisations, which he advises outside of litigation and represents in arbitration and court proceedings. Sebastian holds adjunct professorships at both Dresden University of Technology and University of Leipzig and is author of numerous publications in the field. He is considered "one of the most renowned experts in technology transfer law".

Projects

  • Northvolt - Greenfield investment in Heide - IP issues (2023)
  • German University of Excellence in restructuring of technology transfer (2023)
  • Compleo on the asset acquisition by Kostal out of insolvency - IP issues (2023)
  • Laureus Capital in Series B financing of biotech company Ethris (2022)
  • Cellex Group on cell therapy joint venture with Intellia and Blackstone (investment of USD 250 million) (2021)
  • Research organisation on compliance and defence against millions of euros in recoveries from R&D contract (2019-2022)
  • Global Food Company: Expert Opinion in U.S. IP Litigation before the U.S. District Court for the Central District of California (2020)
  • U.S. biotech company on licenses in bankruptcy under German law (2019/2020)
  • Copyright advice for a 400 million real estate project in Munich city center location (2018-2020)
  • Swedish pharmaceutical company in an international arbitration under SCC Rules on a global license (2013-2019)
  • KATHREIN in sale of core business and IP to Ericsson (2018/2019)
  • Global pharmaceutical company in patent infringement litigation (Hatch Waxman Act) before the U.S. District Court for the District of Delaware in pre-trial proceedings and trial on licensing issues (2016-2018)
  • DAX company in court proceeding on royalty claims arising from a R&D agreement (2015-2017)
  • State Ministry on introduction BOS digital radio (2012-2014)
  • Insolvency administrator of Qimonda AG on the exploitation of 16,000 patents, licensing issues and related court proceedings (2009-2014)

Distinctions

  • Best Lawyer (Handelsblatt) for Intellectual Property (2012-2022)
  • Best Lawyer (Handelsblatt) for Technology Law (2020 – 2023)
  • Top-Lawyer Copyright Law 2021 (Wirtschaftswoche)
  • ... is considered one of the most renowned experts in technology transfer law (Wirtschaftswoche 2021)
  • IAM World Leading IP Strategist 2023, IAM 1000 Patent Law 2023
  • “His expertise in the laws governing technology transfer agreements is evident in his appointment to an honorary professorship of technology transfer at the Technical University of Dresden and of licensing law at the University of Leipzig” (IAM 2023)

Career

Studied at University of Passau, Dresden TU Dresden and University of Exeter (UK)
Research Fellow at the Chair of Civil Law and Intellectual Property Law at the TU Dresden
Ph.D. at University of Leipzig
Experience abroad: secondment at law firm in New York (USA)
At Noerr since 2002
Admitted to the Dresden Chamber of Lawyers

Memberships

  • Honorary Professor for IP and licensing law at the University of Leipzig (2019)
  • Honorary Professor for IP and technology transfer at TU Dresden (2012)
  • German Association for the Protection of Intellectual Property (GRUR), Chairman of the Central-East Regional Group, Member of the GRUR Board of Directors and the competition law commitee
  • Licensing Executive Society
  • Co-Chair of the Working Group for R&D Contracts at the German Federal Ministry for Economic Affairs and Energy
  • Co-editor of the Journal for Digital Economy Law (ZdiW)

Lectures

  • Teaching assignments at TU Dresden, University of Leipzig, TU Berlin and Fordham Law School, New York
  • Regular lectures on intellectual property, technology transfer and research promotion issues
  • Selected seminars and lectures:
  • Development agreements and research contracts, subsidies for R&D projects
  • Licenses in insolvency situations
  • Technology transfer for start-ups, participation of universities in spin-offs
  • Open source licences

Publications

  • Material Transfer Agreements in the Focus of European State Aid Law?, Pharma Law 2023, 73
  • Comment on BGH judgment of 24 January 2023 - IX ZR 213/21 - CQI report II - exhaustion effect of a covenant not to sue, GRUR-Prax 2023, 163
  • Comment on BGH judgement of 27 October 2022 – IX ZR 213/21 - Termination upon insolvency, GRUR-Prax 2023, 115
  • Exclusive licenses in software development contracts - valid under antitrust law?, CR 2021, 641
  • Copyright Licensing (with Christian Berger), 3rd edition 2022
  • NDA in insolvency (with Jette Nordemann), ZdiW 2021, 403
  • Preliminary injunctions in patent law and Art. 50 TRIPS (with C. Gaul), GRUR-Prax 2021, 446
  • Employee Invention Law (with Theresa Arand), Götting/Meyer/Vormbrock, IP Practice Manual, 2nd edition 2020.
  • R&D Contracts (with Hans-Peter Rosenberger), 3rd edition 2018
  • Employee-Inventors Compensation in Germany – Burden or Incentive, les Nouvelles, June 2017
  • Know-how-Protection, Götting/Kaiser, Wettbewerbsrecht, 2016
  • Short selling - not just an issue for financial markets, GRUR 2012, 1003
  • R&D State Aid Law, Birnstiel/Bungenberg/Heinrich, European State Aid Law, 2013
  • Licenses in insolvency – a neverending story? (with Christian Pleister), NZI 2012, 1792
  • Acquisition and Licensing of Research Results under the Bayh-Dole Act (with Axel Hoffmann), GRUR Int. 2011, 789.
  • Patent-Cross-Licenses – Terra Incognita? (with Stephan Bauer), GRUR Int. 2010, 641
  • Ad fontes - the country of protection principle, in: Götting/Schlüter, jubilee publication Dieter Stauder, 2010
  • The "Haftetikett"-ruling of the BGH - Overprotection of the Employee Inventor?,jubilee publication IP-LL.M. Program, 2010
  • Back Licenses in R&D Contracts (with Sandra Hering), GRUR Int. 2009, 106
  • Poisoned money? IP-related conditions in publicly funded R&D projects, BB 2009, 679
  • Richard Wagner and Copyright Law, NJW 2007, 653
  • Open Source Development Communities, Meißner/Engelien, Virtual Organisation, 2005
  • Comment on U.S. District Court for the Southern District of New York, GRUR Int. 2002, 364 – E-Book
  • Non-competition clauses in the publishing agreement, 2002
  • The ECJ and TRIPS: Hermès, Dior and the Consequences (with Thomas Groh), GRUR Int. 2001, 497
  • Comment on OLG Dresden, ZUM 2000, 959 - Csàrdàsfürstin