image of John DieckmannJohn Dieckmann

Clayton Utz Partner , Melbourne T +61 3 9286 6907 https://www.claytonutz.com

John has advised on information technology and intellectual property matters for over 20 years. With dual qualifications in law and IT, his practice focusses on major technology projects and IT procurement, cyber security and privacy issues, IoT technologies, the protection and commercialisation of digital assets and technology-based commercial transactions.

John has also been a key advisor on the technology and IP aspects of some of Australia's largest infrastructure projects, with a particular emphasis on toll road projects. He also advises regularly on IP management and commercialisation, technology based joint ventures and on IT transition, separation and shared services arrangements associated with significant M&A transactions and corporate restructurings.

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Expertise

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Telecommunications, Media and Technology

Core systems implementation and business transformation: John is known for his work in advising on complex system integration projects, including ERP, finance, CRM and asset management systems and specialist systems such as electronic medical records.  Examples include:

  • advising the Royal Children's Hospital on its landmark implementation of an electronic medical records system;
  • advising the State of Victoria on standing offer arrangements to support its $140M programme for the design, implementation and support of new electronic medical systems for the Peter MacCallum Cancer Centre, the Royal Melbourne Hospital, and the Royal Women’s Hospital;
  • advising a large provider of automotive and marine maintenance services on its implementation of a cloud based ERP system to support back office processes and workforce coordination;
  • advising the State of Victoria on the design, implementation and support of an information management system to allow kindergartens and early childhood learning centres throughout Victoria to administer funding, data collection, and mandatory compliance reporting;
  • advising a global biotherapies business on the implementation of a cloud-based service for the provision employee share plan administration services across its workforce;
  • advising the State of Victoria on the implementation of its "Safescript" platform, to deliver real time prescription monitoring services to doctors and pharmacists dispensing prescription medicines in Victoria, and its subsequent transition to a national system (based on that system); and
  • advising on the design, implementation and support of cloud based system to manage asset maintenance and management activities for assets deployed in all public schools throughout Victoria.

Outsourcing and managed services: John advises regularly on business process and technology outsourcings, covering services such as IT, telecommunications, payroll/HR, financial services and call centre services.  Examples include:

  • advising a government client on a mutli-year outsourcing of applications development and maintenance services for critical legacy applications supporting key programmes managed by the relevant department;
  • advising one of Australia's largest retail businesses on the outsourcing of support services for in-store IT systems (including point of sale devices), across all of its stores throughout Australia;
  • advising a government client on the outsourcing of IT enterprise support services covering networks, security systems, IT infrastructure and core systems;
  • advising a large insurance company on its whole of telecommunications outsourcing; and
  • advising a major energy company on the outsourcing of customer call centre, IT support and business processes for revenue management, fault management and billing functions.

While in the UK, John advised a major UK plc on its £2 billion outsourcing of IT infrastructure and transformation projects, one of the largest private sector outsourcings to have been undertaken in the UK at the time.


Telecommunications

John's experience advising in the telecommunications space includes:

  • advising a major automotive distributor on the implementation of a data communications network and long term provision of telecommunications services agreements to provide "in car" safety and security features.
  • advising on nbn's $1.1bn wireless procurement project, involving agreements with Ericsson Australia for the design, deployment, operation and maintenance of an advanced LTE wireless network to service parts of the country not serviced by fibre or satellite networks;
  • advising a mobile virtual network operator on wholesale carriage arrangements and the procurement of OSS and BSS systems and supporting back office systems as part of the establishment of its business;
  • advising a government client on the design and implementation of a replacement wide area network to connect its devices, offices and data centres, and supporting all aspects of its IT enterprise; and
  • advising a government agency on the design, implementation and support of a new integrated IP based telephony system and PABX as part of the redevelopment of its premises.

Cloud and "as a service"

John has advised extensively on cloud based technologies and the acquisition of cloud based (SaaS, IaaS, PaaS) solutions both on a standalone basis and for use as part of broader systems implementation projects. Examples include:

  • advising a fintech company on standard agreements for the provision of a cloud based, b2b account management and credit administration platform for the management of trade accounts and third party credit arrangements;
  • advising an Australian fintech company on the establishment of a mass market, kiosk-based payment processing service and associated supply agreements, including the development of standard user agreements;
  • advising a large insurance company on the migration of its outsourced midrange and mainframe outsourced environment to a PaaS solution;
  • advising a large energy company on the implementation of a cloud based CRM system;
  • advising a Japanese provider of mobile-based online gaming services (and associated smartphone applications) on its end user licensing agreements and online terms of service (including for a virtual currency scheme) for Australia; and
  • advising a major automotive distributor on cloud based agreements for the provision of a dealer management system.

See Telecommunications, Media and Technology

Intellectual Property

A large part of John's practice includes advising on the protection, management and licensing of intellectual property rights both on a standalone basis and as part of broader commercial transactions.  Examples include:

  • advising a Victorian government department on the development of agreements for the licensing of indigenous artworks for use in promotional material;
  • advising a startup company specialising in machine learning systems on the protection of, and strategies for commercialising, key technology products (and the development of associated contracting templates); and
  • advising nbn on, and developing policies for, the identification and management of intellectual property assets within nbn's business and contracting templates.

John also advises on disputes concerning intellectual property licensing with a technology element.  Recently, he advised a large retailer of personal computers and peripherals on a dispute involving allegations of unauthorised copying and distribution of commercial off the shelf software products.

See Intellectual Property

Corporate / M&A

Acquisitions: advising on the acquisition of technology and IP rich businesses, from a technology perspective.  Examples include:

  • advising a major automotive company on the IP and technology issues associated with the acquisition of a cloud service provider specialising in dealer management systems;
  • advising an offshore company on the IP and licensing issues associated with the acquisition of an Australian technology provider specialising in the development, licensing and support of cryptographic software and certification systems; and
  • advising a consortium of offshore investors on the acquisition of a number of cyber security companies, including IP issues associated with the acquisition and aspects of relevant FIRB approval processes.

Restructuring: advising the Australian arm of a large multinational organisation on the development of shared services arrangements for its entire Australian operation, spanning a variety of corporate, finance, HR and IT services to multiple business divisions.

IT separation and transition projects: advising in relation to IT separation and transition arrangements.  Notable examples include:

  • advising on licensing and transitional support arrangements arising from the acquisition by a fintech client of a payment solutions provider;
  • advising on the IT transition and sharing arrangements arising in connection with a large petrol retailing alliance; and
  • advising on IT transition and data sharing arrangements put into place in connection with the Coles Group's $1.4bn sale of Myer.

See Corporate / M&A

Privacy

Data breach notification: advising a financial services company on a data breach notification to the Office of the Information Commissioner, and associated risk management and remedial issues, arising from a suspected data breach.

Workplace surveillance: advising a multinational IT company on issues associated with the deployment of workplace surveillance and security technologies in Australia.

SPAM investigation: advising a major Australian telecommunications company in relation to an inquiry by the Australian Communications and Media Authority into SPAM issues.

Employee screening: advising on the outsourcing of employee screening and criminal history checks for prospective Victorian government employees, including associated privacy issues and contractual frameworks to manage compliance issues.

Data sharing: advising a major automotive company on data sharing agreements and protocols for the sharing of customer data across retail, finance and insurance companies operating as part of a global alliance.

See Privacy

Government Services

Victorian Government Technology Procurement: John is a key advisor to the Victorian Government, and has advised on many significant technology projects undertaken in the Victorian public sector, covering outsourcing, systems implementation, licensing and disputes on technology projects.  For examples, see the Technology, Media and Telecommunications tab above.

Victorian Government contract templates: John advises regularly on the IP and technology aspects of template contracts developed for Victorian government agencies for use in major construction projects.  He is currently advising on potential reforms to the standard eServices Register contract, which is used to procure the majority of technology services by Victorian government agencies.

North East Link Project: John is a key member of the legal team advising on the $16 billion North East link Project.  John leads the team advising on the IP and technology aspects of the project.

West Gate Tunnel Project: John was a key member of the legal team advising the Department of Treasury and Finance on Transurban's market led proposal for the $6.7 billion road project.  John advised on the IP and technology aspects of the project, including on the development of regimes to address the technology operational issues arising from the sharing of operational systems with the CityLink concession and tolling interoperability issues. 

Westconnex: advised on the procurement of roadside and back office tolling systems and associated underlying platforms to toll Sydney's Westconnex tollroad, as well as technology transition arrangements associated with the sale of a 51% interest in the Westconnex road to Transurban.

Legacy Way: procurement of a roadside tolling system and associated support services for use on Brisbane's Legacy Way tollroad.

Melbourne Metropolitan rail franchising: while at another firm, John was a key adviser on IP and technology issues associated with the privatisation of Melbourne's train and tram network in 1999 and again in 2009.  This included the development of the original regime to manage the complex myriad of intellectual property residing within the original government agency and ongoing management of IP and technology issues associated with rolling stock and rail operations.

See Government Services

Digital Economy

Core systems implementation and business transformation: John is known for his work in advising on complex system integration projects, including ERP, finance, CRM and asset management systems and specialist systems such as electronic medical records. Examples include:

  • advising the Royal Children's Hospital on its landmark implementation of an electronic medical records system;
  • advising the State of Victoria on standing offer arrangements to support its $140M programme for the design, implementation and support of new electronic medical systems for the Peter MacCallum Cancer Centre, the Royal Melbourne Hospital, and the Royal Women’s Hospital;
  • advising a large provider of automotive and marine maintenance services on its implementation of a cloud based ERP system to support back office processes and workforce coordination;
  • advising the State of Victoria on the design, implementation and support of an information management system to allow kindergartens and early childhood learning centres throughout Victoria to administer funding, data collection, and mandatory compliance reporting; 
  • advising a global biotherapies business on the implementation of a cloud-based service for the provision employee share plan administration services across its workforce;
  • advising the State of Victoria on the implementation of its "Safescript" platform, to deliver real time prescription monitoring services to doctors and pharmacists dispensing prescription medicines in Victoria, and its subsequent transition to a national system (based on that system); and
  • advising on the design, implementation and support of cloud based system to manage asset maintenance and management activities for assets deployed in all public schools throughout Victoria.

Outsourcing and managed services: John advises regularly on business process and technology outsourcings, covering services such as IT, telecommunications, payroll/HR, financial services and call centre services. Examples include:

  • advising a government client on a mutli-year outsourcing of applications development and maintenance services for critical legacy applications supporting key programmes managed by the relevant department;
  • advising one of Australia's largest retail businesses on the outsourcing of support services for in-store IT systems (including point of sale devices), across all of its stores throughout Australia;
  • advising a government client on the outsourcing of IT enterprise support services covering networks, security systems, IT infrastructure and core systems;
  • advising a large insurance company on its whole of telecommunications outsourcing; and
  • advising a major energy company on the outsourcing of customer call centre, IT support and business processes for revenue management, fault management and billing functions.

While in the UK, John advised a major UK plc on its £2 billion outsourcing of IT infrastructure and transformation projects, one of the largest private sector outsourcings to have been undertaken in the UK at the time.

Telecommunications

John's experience advising in the telecommunications space includes: 

  • advising a major automotive distributor on the implementation of a data communications network and long term provision of telecommunications services agreements to provide "in car" safety and security features; 
  • advising on nbn's $1.1bn wireless procurement project, involving agreements with Ericsson Australia for the design, deployment, operation and maintenance of an advanced LTE wireless network to service parts of the country not serviced by fibre or satellite networks; 
  • advising a mobile virtual network operator on wholesale carriage arrangements and the procurement of OSS and BSS systems and supporting back office systems as part of the establishment of its business;
  • advising a government client on the design and implementation of a replacement wide area network to connect its devices, offices and data centres, and supporting all aspects of its IT enterprise; and
  • advising a government agency on the design, implementation and support of a new integrated IP based telephony system and PABX as part of the redevelopment of its premises.

Cloud and "as a service"

John has advised extensively on cloud based technologies and the acquisition of cloud based (SaaS, IaaS, PaaS) solutions both on a standalone basis and for use as part of broader systems implementation projects. Examples include:

  • advising a fintech company on standard agreements for the provision of a cloud based, b2b account management and credit administration platform for the management of trade accounts and third party credit arrangements;
  • advising an Australian fintech company on the establishment of a mass market, kiosk-based payment processing service and associated supply agreements, including the development of standard user agreements;
  • advising a large insurance company on the migration of its outsourced midrange and mainframe outsourced environment to a PaaS solution;
  • advising a large energy company on the implementation of a cloud based CRM system;
  • advising a Japanese provider of mobile-based online gaming services (and associated smartphone applications) on its end user licensing agreements and online terms of service (including for a virtual currency scheme) for Australia; and
  • advising a major automotive distributor on cloud based agreements for the provision of a dealer management system.

Acquisitions: advising on the acquisition of technology and IP rich businesses, from a technology perspective. Examples include:

  • advising a major automotive company on the IP and technology issues associated with the acquisition of a cloud service provider specialising in dealer management systems;
  • advising an offshore company on the IP and licensing issues associated with the acquisition of an Australian technology provider specialising in the development, licensing and support of cryptographic software and certification systems; and
  • advising a consortium of offshore investors on the acquisition of a number of cyber security companies, including IP issues associated with the acquisition and aspects of relevant FIRB approval processes.

Restructuring: advising the Australian arm of a large multinational organisation on the development of shared services arrangements for its entire Australian operation, spanning a variety of corporate, finance, HR and IT services to multiple business divisions.

IT separation and transition projects: advising in relation to IT separation and transition arrangements. Notable examples include: 

  • advising on licensing and transitional support arrangements arising from the acquisition by a fintech client of a payment solutions provider;
  • advising on the IT transition and sharing arrangements arising in connection with a large petrol retailing alliance; and
  • advising on IT transition and data sharing arrangements put into place in connection with the Coles Group's $1.4bn sale of Myer.

Victorian Government Technology Procurement: John is a key advisor to the Victorian Government, and has advised on many significant technology projects undertaken in the Victorian public sector, covering outsourcing, systems implementation, licensing and disputes on technology projects. For examples, see the Technology, Media and Telecommunications tab above.

North East Link Project: John is a key member of the legal team advising on the $16 billion North East link Project. John leads the team advising on the IP and technology aspects of the project.

West Gate Tunnel Project: John was a key member of the legal team advising the Department of Treasury and Finance on Transurban's market led proposal for the $6.7 billion road project. John advised on the IP and technology aspects of the project, including on the development of regimes to address the technology operational issues arising from the sharing of operational systems with the CityLink concession and tolling interoperability issues.

Westconnex: advised on the procurement of roadside and back office tolling systems and associated underlying platforms to toll Sydney's Westconnex tollroad, as well as technology transition arrangements associated with the sale of a 51% interest in the Westconnex road to Transurban.

Legacy Way: procurement of a roadside tolling system and associated support services for use on Brisbane's Legacy Way tollroad.

See Digital Economy

Knowledge

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