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Kate Marshall

Partner
+61.3.9640.4410
Fax +61.3.9205.2055

Ms. Marshall's practice focuses on Australian and international information technology (IT) and intellectual property (IP) related issues, including IT procurement, implementation and outsourcing projects and IP licensing and commercialisation.

Her practice includes advising on privacy and data security and the issues associated with cloud computing. She negotiates and drafts technology contracts including systems integration and outsourcing arrangements and advises on procurement approaches, contracting models, tender processes and procurement strategy. She also advises in relation to the ongoing management of the vendor relationships and issues and disputes with technology projects.

Professional Background

Ms. Marshall has focused on IT and IP for over 20 years. Prior to joining K&L Gates she worked at a large Australian commercial law firm.

Achievements

  • Listed in Best Lawyers for Intellectual Property Law (2014/15 – 2017), Information Technology Law (2014/15 - 2017) and Privacy and Data Security Law (2017)
  • Included in Australasian Lawyers 'Women to Watch' list, 2015
  • Chambers Asia Pacific 2013 recommended Intellectual Property lawyer
  • Chambers Asia Pacific Leader in her field 2012

Professional/Civic Activities

  • Chair of the K&L Gates Australian Gender Committee
  • Work Practices Committee Victorian Women Lawyers
  • Intellectual Property Society of Australia and New Zealand
  • Licensing Executives Society
  • Victorian Society for Computers and the Law
  • Board – Epilepsy Foundation of Victoria
  • Management Committee Point Leo Boat Club

Speaking Engagements

Ms. Marshall has presented on a broad range of topics relevant to her area of speciality including IP for non-lawyers, trade mark issues, cloud computing, issues in IT agreements and privacy issues.
  • Advising on the proof of concept, trial and implementation of leading edge software including preparing the proof of concept agreement, the suite of agreements for the pilot, an agreement with the software vendor to allow for a mass market rollout to the client's customers and various related agreements including hardware and other key suppliers. This includes advising on the IP and regulatory issues, cloud computing and data security risks.
  • Advising Origin Energy on the recent outsourcing of its infrastructure and telecommunication services including the RFP process, preparing and negotiating the agreements and providing ongoing advice on this project.
  • Advising a supplier on the AO outsourcing agreement for one of Australia's top four Banks.
  • Advising a supplier on a panel arrangement for outsourcing services for a further top four Australian Bank.
  •  Advising a listed company on a BPO outsourcing project including the appropriate contracting model and preparing and negotiating the proposed agreement.
  • Advised Origin Energy on its retail transformation program which includes a SAP implementation program and BPO outsourcing both prior to and after the implementation of the new system.
  • Advising a listed company on an AO project.
  • Advising a listed company on its outsourcing strategy including performance issues with its current supplier.
  • Advising various customers on cloud computing arrangements involving SAP (software as a service), HP (infrastructure as a service), Microsoft (SaaS) and Salesforce (SaaS).
  • Advising a listed company on the outsourcing of the maintenance of its applications and development work relevant to its applications.
  • Advising an Australian university on its website development and hosting arrangements.
  • Advising an Australian university on the establishment of a partnership with a Chinese university.
  • Advising an Australian university in relation to its arrangements in various offshore campuses including an Indian joint venture.
  • Advising Open Universities Australia on its CRM project.
  • Advising Defence (DSG) on a large scale systems implementation and integration project (GEMS) establishing management systems across the Defence Estate. This included the tender process, evaluation of vendors, drafting the RFT terms and conditions and contract and ensuring compliance with government procurement policies.
  • Advising Defence (DMO) and negotiated a number of settlement arrangements arising from issues with a politically sensitive IT project.
  • Advising Defence (DMO) on the change of control of a critical provider and negotiated amendments to the Defence contract to provide additional safeguards.
  • Advising Defence on the best contracting model (taking into account the AUSDEFCON contracts that could be applicable and changes required), drafting and negotiating the initial design and planning stage contract documentation and procurement and FMA related issues.
  • Advising Defence (DMO) on the JP2077 logistics project to provide a single information logistics system for Defence including the go-live of phase 2.B.1.
  • Advising a listed company on the procurement of a data management system.
  • Advising Myer on its separation from Coles including negotiating an infrastructure outsourcing arrangement.
  • Advising Myer on its procurement of its new POS system including the tender process and negotiating the various agreements required for the new system (software, infrastructure, services).
  • Advising CPA Australia on a significant systems integration project.
  • Advising on various SAP related projects including licensing and services agreements and systems integration agreements.
  • Advising Local Directories on various IT and telecommunications issues and preparing agreements for its business.
  • Advising a university on the risks associated with moving to Google apps.
  • Conducting a review of a multinational's Australian suite of agreements for technology licensed throughout Australia and enforcing the licences granted to use these technologies.
  • Acting for a multinational company in relation to various patent infringement proceedings in the Federal Court.
  • Managing the Patties Food Limited brand portfolio (including Four N' Twenty and many other iconic brands) and advising on compliance with food industry codes, passing off and infringement issues.
  • Advising an Australian University on IP best practice including reviewing the IP Statutes, regulations, policies and practices.
  • Preparing various template collaboration and licence agreements.
  • Preparing template IP assignments and licences for Thomson Reuters Intellectual Property Law publications.
  • Advising an Australian Research Institute on various IP issues.