Jane is dual qualified as a solicitor and a trade mark and design attorney, with many years private practice and in-house experience advising on commercial contracts, intellectual property, commercial agency and all aspects of technology law.

She provides a commercially-focused service to clients in contentious and non-contentious matters and has particular expertise in advising customers and suppliers on IT transactional matters including the acquisition of IT systems, software licensing, managed services and outsourcing agreements. Jane also has strong corporate knowledge through her considerable experience in and advising on intellectual property and data protection aspects of corporate sales and acquisitions and joint ventures, including post-transaction IP and IT contracts for spinouts. Jane’s recent work involved advising clients on largescale technology projects. She works on complex, high-value commercial transactions, and advises blue-chip clients across a wide range of sectors on contract matters that go to the very core of their businesses. Jane has published articles on her specialist areas in the Irish media and is the co-author of the Ireland chapter in the ICLG 2019 and 2020 editions of Trade Mark Laws and Regulations. Jane is also a regular speaker at various technology seminars, most recently in respect of the Platform-to-Business Regulation.

Jane has significant experience of providing strategic, commercial advice to national and multinational businesses in retail, technology, and pharma sectors on brand protection and exploitation, and on the enforcement side, on oppositions, infringement and cancellation of intellectual property rights. She frequently represents applicants and opponents in trade mark oppositions and cancellations before the Irish and EU Intellectual Property Offices, and has advised on domain name disputes before the World Intellectual Property Organization. In contract matters, Jane has expertise in drafting and negotiating complex intellectual property licensing arrangements, R&D collaboration agreements between industry and research bodies, and international franchise agreements. Jane works closely with the firm’s other departments to provide our clients with full-service advice about their intellectual property.

Jane advises on all aspects of privacy, technology and e-commerce law, including GDPR compliance projects, security risk management by working with clients to prepare incident response reports and address queries from the Data Protection Commission, data subject access requests and cross-border transfers of personal data. As part of the firm’s solutions-focused approach, her work also involves collaborating with other firm departments to address data protection and technology law queries that arise in other practice areas. Jane’s experience includes negotiation and advising on a wide range of technology and outsourcing agreements, including compliance with e-commerce and consumer protection legislation.  

Experience

  • Acted in-house (on secondment) for OpenJaw, a specialist aviation software company.
  • Drafted and led negotiations for an Irish FinTech on a high value software licensing and services agreement with a global financial institution.
  • Coordinated, drafted and negotiated a suite of contracts as part of the outsourcing of certain HR functions to recruitment agencies on behalf of the Irish subsidiary of an insurance and financial services multinational.
  • Advised a large European data management business on software systems integration contracts in a time critical project for its group-wide ERP solution, across all its business functions.
  • Advised the receiver of a target company on patent infringement risk as part of a potential sale of an IP-rich company by the receiver.
  • Advised an international automotive company on Ireland’s National IP Protocol and intellectual property issues arising in funding arrangements and licensing options under a consortium agreement between that company and State bodies and universities to collaborate on R&D in Ireland.
  • Providing ongoing branding and intellectual property advice to several national and multinational retailers concerning their operations in the Irish and EU markets.
  • Advised a UK public body on Irish law requirements for UK information society services  to avail of country of origin protection in Ireland under the E-Commerce Directive post  Brexit.
  • Advised Deloitte on data protection aspects of its acquisition of DNM, an international consultancy service provider and accredited partner of Amazon Web Services.
  • Advised Indigo Telecom Group Limited on data protection issues during its acquisition of Foursite Design Consultants Limited (t/a 4site) which provides mobile wireless, and fibre services.
  • Advised Gowan Group Limited on data protection matters in its agreement to acquire Opel Automobile Ireland Limited.
  • Advised on international forecourt provider on various matters including its data processing agreements with customers and suppliers.
  • Led the data privacy side in the firm’s advice to a multinational health care services company on data privacy considerations on a complex data subject access request made in a litigation context and the successful defence of a complaint to the Data Protection Commission.
  • Advised a UK public body on Irish law requirements for UK information society services  to avail of country of origin protection in Ireland under the E-Commerce Directive post  Brexit.

Contact Jane

+353 1 637 1554
jogrady@lkshields.ie

LinkedIn

More about Jane O’Grady

Awards &
Recommendations

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  • Admitted as a Solicitor in Ireland
    Law Society of Ireland
    2017
  • Registered Trade Mark Agent (Ireland) and Trade Mark and Design Attorney (EU)

  • Certificate in Trade Mark Law
    Law Society of Ireland
  • Diploma in Legal Practice
    The University of Law, Chester
  • LLB
    University College Cork
  • BCL
    University College Cork

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