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Jacqueline Scarlett

Special Counsel
+61.3.9640.4420
Fax +61.3.9205.2055

Ms. Scarlett has extensive experience in the areas of intellectual property (IP), technology and privacy law.

She has worked on the IP and technology aspects of a number of major projects and drafted and negotiated technology contracts including systems integration and outsourcing arrangements.

Ms. Scarlett has also provided advice on privacy and data security matters and IP advice in relation to trade marks, copyright, the protection of confidential information and IP commercialisation.

Professional Background

Ms. Scarlett has worked in the area of commercial technology and IP for over 15 years. Prior to joining K&L Gates, she worked at a large Australian commercial law firm.

Professional/Civic Activities

  • Intellectual Property Society of Australia and New Zealand member 
  • International Association of Privacy Professionals – Australia and New Zealand member 
  • Victorian Society for Computers and the Law member 
  • Licensing Executives Society Australia and New Zealand member 
  • Victorian Women Lawyers member

Information Technology 

  • Advising Monash University in relation to the contractual framework for offering computing and storage services tailored for research as part of both the Commonwealth funded RDSI and NeCTAR projects. This included drafting agreements for Monash to enable Monash to offer the VicNode@Monash and Research@Cloud services to other organisations. The services offered by Monash include the provision of infrastructure services and software as a service services.
  • Advising Australian pre-university education institution in relation to a business transformation program to replace its current HR technology systems. This included drafting the agreements for the institute's request for tender. 
  • Drafting website terms and conditions for numerous organisations including an Australian University, listed companies, small businesses and a health fund providing online counselling services. 
  • Advising Hydro Tasmania for the sourcing and implementation of a global ERP system, including negotiating the contractors with SI vendors. 
  •  Advising Origin Energy on its retail transformation program including a significant business processes outsourcing project. The advice included drafting the contracts for the tender and negotiating the contracts with the preferred vendors. 
  • Advising the Victorian Government in relation to the procurement of a new information technology (IT) system for the prosecution, court enforcement and warrant enforcement of traffic and other fixed penalty infringements in Victoria. Ms. Scarlett also provided advice on the ownership of IP in the existing IT system used by the Victorian Government. 
  • Advising Myer on its agreements for the upgrade of its point of sale system and negotiating contracts with the preferred vendors. 
  • Advising CPA Australia on the IT agreements for a systems integration role. 
  • Advising SP AusNet on the IT agreements for the supply, installation and service of smart meters and related infrastructure. 

Intellectual Property 

  • Advising a client in relation to granting an IP licence to an Australian University and negotiating contracts between the parties. 
  • Advising Monash University in relation to the collaboration with SEU University in China. We have worked with Monash's Chinese lawyers on this project, provided structuring advice and prepared various agreements including the Joint Graduate School Agreement, the Co-operation Agreement and Charter, the Double Masters Program Agreement and the Ph.D Program Agreement. 
  • Drafting education cooperation agreements between Monash College and organisations in Bangladesh and Sri Lanka. 
  • Advising a leading Australian University on its right to use copyright works of other organisations and advising on strategies to obtain appropriate consents where necessary. 
  • Advising Monash University on protection of its brand and drafting internal trade mark licenses for use by the University's various clubs and societies. 
  • Drafting a licence and commercialisation agreement for a large Victorian hospital. 
  • Drafting a commercialisation agreement for an Australian research institute. 
  • Conducting an IP due diligence on behalf of a listed company in relation to the potential purchase of another listed company. 
  • Advising Rathbone Wine Group in relation to its trade mark portfolio review. 
  • Advising HRL Limited on complex IP arrangements including in relation to the commercialisation of carbon capture technology and the licensing of various technology.

Intellectual Property 

  • Advising a listed company on risks associated with transferring personal information overseas or using an overseas infrastructure provider to host personal information and developing a strategic management plan to manage those risks. 
  • Providing a listed company with ongoing advice about the application and implication of Australian privacy law within their business. 
  • Providing general spam and privacy advice to a not-for-profit organization regarding direct marketing via email using personal information.
  • Conducting a privacy audit for a not-for-profit organisation.
  • Advising a not-for-profit organisation with strategic advice on how to respond to a potential data breach.
  • Drafting and reviewing privacy policies for many clients.