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Dr Sonja Bohusch (née Mroß)

Senior Associate
About

Sonja Bohusch represents clients from various industries in disputes in the field of all intellectual property rights, in particular in patent infringement and invalidity proceedings.

She has further experience in advising clients on patent transfers and licensing as well as in preparing opinions on freedom to operate in connection with product launches (freedom-to-operate analyses).

In addition, she counsels on the intersection with antitrust law, with the protection of technical trade secrets as well as on copyright, design and trademark law.

Sonja has special expertise in the IT sector (consumer electronics, telecommunications, media and technology), in the automotive as well as the manufacturing and processing industries. Her particular interest is in digitization including all issues arising in relation to artificial intelligence (AI).

EXPERIENCE

  • Advising and representing several multinational technology companies active in the field of development and marketing of personal computers, computer software, consumer electronics and related services in a patent dispute concerning touch screen technology.
  • Advising and representing a major technology and telecommunications company in patent disputes, including patent infringement and invalidity proceedings.Counselling on patent litigation (SEPs) in the automotive sector with regard to UMTS and LTE connectivity (connected cars).
  • Counselling a globally leading US-based sportswear company in IP matters, including invalidity proceedings regarding designs.
  • Advising and representing a major software and web services company in patent dispute in Germany, including patent infringement and invalidity proceedings.*
  • Development of IP strategy for software start ups, including advice regarding product launches and freedom-to-operate analyses.*
  • Advice on non-contentious matters regarding transactional and licensing issues, including coordination of the international IP workstreams.*

*Denotes experience from previous firm.

Education

    Publications

    • Copyright in artificially generated works, co-author of the Study Report of the German National Group of the AIPPI, 2019 and German delegate at the adoption of the Resolution in London
    • AI:Decoding IP conference - day 2 highlights, Guest blog on IP Kat, 2019
    • Exploitation of reputation and impediment in case of almost identical imitation, comment on FCJ decision of September 20, 2018 - I ZR 71/17, in: jurisPR-WettbR 2/2019, note 2
    • Creditors' interest in enforcing the right to information prevails despite expiration of the patent in suit, comment on FCJ decision of September 25, 2018 - X ZR 76/18, in: GRUR-Prax 2018, 525
    • Irrelevance of design alternatives for the exclusion of protection of technically functional features also in design law (DOCERAM/CeramTec), comment on ECJ decision of March 8, 2018 - C-395/16, in: jurisPR-WettbR 6/2018, note 1
    • Update on the distinction between intended use and inadmissible new manufacture within the scope of patent exhaustion, comment on FCJ decision of 24 October 2010, in: jurisPR-WettbR 6/2018, note 2 (co-authored by Dr. Eva-Maria Herring)
    • Deception of origin may be acceptable when using the state-of-the, comment on FCJ decision of September 14, 2017 - I ZR 2/16 - Light Balloon, in: GRUR-Prax 2017, 494
    • Protection against unfair imitation of a (previously) patented product, comment on FCJ decision of December 15, 2016 - I ZR 197/15 - Ground anchors, in: jurisPR-WettbR 7/2017, note 3
    • Submission to the ECJ on the interpretation of the provisions of the Specific Mechanism, comment on RC Dusseldorf, decision of December 15, 2016, in: GRUR-Prax 2017, 150

    Seminars

    • Pearing into the Chrystal Ball: Using Patent Filings to identify Corporate Investment and Strategy, Moderation of the panel and contribution to the European perspective, annual conference of the German-American Lawyers' Association (DAJV), 13 September 2019, Berlin

    Prior Experience

    • February 2020: Re-join DLA Piper as Senior Associate
    • 2017-20: Big international law firm based in Dusseldorf, primary focus on patent law and patent litigation
    • 2016: DLA Piper, specialising on IP and unfair competition law
    • Scientific assistant at the Institute for Intellectual Property Rights and Copyright (IGRU) at the University of Cologne, doctorate thesis on Technical functionality in the field of intellectual property law and competition law
    • Legal traineeship in Hamburg, Bangkok
    Pro Bono

    Sonja is actively involved in DLA Piper’s pro bono mandates.

    Additional qualifications/positions

    Sonja is co-author of the juris commentary for practitioners on intellectual property and competition law.

    Memberships And Affiliations

    • German delegate of the International Association for the Protection of Industrial Property (AIPPI) and active member of the Study Group on Artificial Intelligence in the area of Copyright Law (2019) as well as in the area of Patent Law (2020)
    • Member of the Association for Intellectual Property and Copyright Law (GRUR)
    • Member of the German-American Lawyers’ Association (DAJV)
    • Member and participant in the mentoring program of Women in IP e.V.
    • Member of the global network organisation Chiefs in Intellectual Property (ChiPs)

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