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"Deirdre Kilroy is a trademark maven with complementary expertise in data privacy, advertising and outsourcing"

World Trademark Review 1000 

Expertise

Deirdre Kilroy is a partner in the Technology and Innovation team and is Head of Intellectual Property. Deirdre specialises in intellectual property, technology and data privacy law. She has over 20 years’ experience in these areas. Prior to joining Matheson she spent over 12 years as Head of Technology & Intellectual Property with a leading Irish law firm.

Many of the commercial contracts that Deirdre has worked on are complex, and she is proactive in helping clients model their agreements and strategic positions. She has experience with large outsourcing projects, technology supply agreements and patent licences, particularly for clients in the life sciences, pharma, data and technology sectors. Much of her work involves advising businesses how to model and conclude contracts, including distribution, supply, services and sales agency arrangements. She works closely with our taxation department on international projects involving significant IP and technology assets.  Deirdre also advises on confidentiality, trade secrets, advertising, ecommerce and consumer protection.

Deirdre assists brand owners to proactively protect and enforce their trade marks and designs in Ireland, Europe and globally. From brand / design creation and pre-registration advice through to searching, filing, enforcement, anti-counterfeiting and commercialisation, her clients benefit from her extensive experience. Her practice focuses on the protection, acquisition and commercial exploitation of intangible assets including through licensing, franchising, collaboration, research, sponsorship and disposals.

Deirdre advises Matheson’s clients on all aspects of privacy and data protection laws including international transfers, policies, audits and the GDPR. She frequently supports clients with retail, online, outsourcing, litigation, M&A and employment needs, helping them navigate the application of data protection laws to their businesses and relationships. Clients with cybersecurity issues and data breach issues regularly seek her advice and services.

For over 16 years Deirdre has also advised international and large national entities on gaming, gambling and lotteries activities in Ireland, online, physical and remotely delivered. Not only does she understand the recent licensing regime applicable to remote operators, but also appreciates how the legislation dating from the 1930s and 1950s applies to todays’ bookmakers, other operators, affiliates and service providers. Clients value her pragmatic approach.

Deirdre is acknowledged by many independent directories as an expert in her field. She regularly lectures in Ireland and internationally, including at the Law Society of Ireland, and contributes to relevant publications. She is a member of the Intellectual Property & Data Privacy Committee of the Law Society of Ireland, and sits on Technology Ireland's Data Working Group. She is a member of the Intellectual Property Commission of the International Chamber of Commerce and also of INTA, IAPPI and SCL.

Experience Highlights

Deirdre has

  • Been named legal adviser to Enterprise Ireland on "Inspiring Partnership - the National IP Protocol 2016", Ireland's policy on commercialisation of state funded IP.
  • Advised a currency trading entity on a large scale technology project involving the creation and licensing of an international IT infrastructure trading platform.
  • Drafted and assisted on large scale device, hardware and services supply agreement to mobile operator.
  • Managed and advised FMCG & food and beverage clients on trade mark prosecution and contentious matters in Ireland.
  • Advised a MNC pharma on all employee, pension and IT management aspects of GDPR.
  • Acted for a large forecourt/ petrol operator on all franchise agreements, distribution agreements, ecommerce terms and conditions and sponsorship deals.
  • Acted for a multi-national fast food company on modelling a multi-million euro promotion, with multiple lottery licences, including drafting ancillary documentation.
Accolades

Deirdre Kilroy is recommended.
European Legal 500 2020

Deirdre Kilroy is "very knowledgeable, sound commercial judgement, responsive to clients and effective in handling difficult opposing counsel".
European Legal 500 2020

Deidre Kilroy is the “star of the show” and a top deal broker for clients in the high-tech and life sciences domains.
IAM Patent 1000 2019

Deidre Kilroy is considered a “bona fide thought leader on trade secrets legislation and SPC regimes”
IAM Patent 1000 2019

Deirdre Kilroy is "terrific" and not only "knows a lot about local trade mark law and practice", but is also "extremely knowledgeable about GDPR"
European Legal 500 2019

Deirdre Kilroy is recommended.
European Legal 500 2019

Deirdre Kilroy has “substantial and substantive IP expertise, as well as tactical skill in handling difficult negotiations. She is also a great communicator and can convey complex ideas simply to non-experts"
Information Technology: Chambers Europe 2019

''She is very business-minded, and at the same time attentive to the detail and nuances that reall make the difference''
Intellectual Property: Chambers Europe 2019

"Matheson IP offering is fronted by the fabulous Deirdre Kilroy, a transactional ace who has handled scores of licensing, franchising, collaboration and disposal deals in her time."
World Trademark Review WTR1000 2019

“Deirdre Kilroy has a strong client focus and an innovative approach.”
Chambers Europe 2018 

“Deirdre Kilroy is technically excellent.”
Chambers Europe 2018 

Deirdre Kilroy is reccomended.
European Legal 500 2018

Managing IP – IP Stars - Trade Marks 2018

Managing IP – IP Stars - Trade Marks 2017

WIPR Leader 2017

Deirdre Kilroy is reccomended.
European Legal 500 2017

"Deirdre Kilroy is a trademark maven with complementary expertise in data privacy, advertising and outsourcing"
World Trademark Review 1000 2017

''Her speed of response and knowledge are excellent''
Chambers Global, 2017

Education
BCL and LLM (Comm) University College Dublin

Five “Headline” Points to Remember When Taking Security Over Intangibles

May 5, 2020, 13:39 PM
As the value of borrowers’ intangible assets have grown over the years, lenders have had to shift their focus from traditional sources of assets as security (such as land, receivables and equipment) to using intangible assets as security. Often the intangible assets will be included as the part of a package of assets secured. In IP rich companies, such as technology, life sciences, fintech and brand-led consumer products, IP assets form a critical part of the overall value of the borrower and have to be considered carefully by a lender from a risk and structuring perspective. 2. Consider Intangibles at Due Diligence Stage: When considering a transaction which will include intangibles in the secured assets portfolio a lender should investigate the borrower's IP portfolio, to satisfy itself that they constitute assets over which a loan can be secured. Often intangible rights will be held in IP ownership structures in which the borrower has a role, the rights in the intangible assets may be held by more than once entity, or account will need to be taken of licensing structures, such as exclusive licences. If the borrower has a licence structure at the heart of its business care should be taken. It is not uncommon for commercial contracts dealing with certain types of intangibles to prohibit encumbering assets that are the subject of the licences. Sometimes a lender may need the borrower to procure third party consents to properly take security. Require the borrower to produce a detailed schedule of its IP assets and to explain any IP ownership structure. Consider carefully any borrower qualification in relation to ownership representations or warranties in the area of IP intangibles. 3. Maintenance and Protection of the Secured Assets: Certain IP rights, such as patents, trade marks, domain names and certain types of designs need to be registered by the borrower to accrue value. These can be very valuable rights and so it is important that a lender understand what gives them intrinsic value. To maintain value registrations of rights of these will also need to be maintained. The security documentation should include appropriate provisions and mechanism requiring preservation of intangible assets. 4. Perfection and registration of security: If a lender takes an interest, including a security interest, in a registered IP right this will need to be registered at the appropriate registry as soon as possible after the transaction in order to put the world at large on notice of its interest. Failure to register security in an appropriate form can lead to impaired lender rights to rely upon the security over the asset. If not recorded in a register the security in relation to the asset may lose ranking, and may not be incapable of being relied upon in court, including in respect of a third party purporting to take an interest in the asset. 5. Enforcement: If a lender takes security over IP then the security documentation must facilitate enforcement should the borrower default in its obligations to the lender. What recourse to realise value in the IP assets will depend on the mechanisms dealt with in the security documentation, and account will need to be taken of the nature of the intangible assets when crafting those mechanisms. If the lender has a mortgage then, provided the assignment of the IP to the lender has been properly managed, the lender may have a right of sale. In other cases there may be a right to appoint a receiver, in which case the receiver powers will need to address the ability to deal with the IP assets. If you are considering this topic, and would like further guidance on the ability to secure intangible assets, please contact Deirdre Kilroy, Technology & Innovation, Patrick Molloy, Finance and Capital Markets or your usual Matheson contact for more information.
Title : Five “Headline” Points to Remember When Taking Security Over Intangibles
Filter services i ds : 2338c4b1-6407-46f1-a26f-08919c304f3f;
Engagement Time : 4
Insight Type : Article
Insight Date : Mar 4, 2020, 12:10 PM
Intellectual Property Rights are often High Value Assets: Lenders will want security and rights over the most valuable assets of a borrower. As the value of borrowers’ intangible assets have grown over the years, lenders have had to shift their focus from traditional sources of assets as security (such as land, receivables and equipment) to using intangible assets as security.

1. the value of borrowers’ intangible assets have grown over the years, lenders have had to shift their focus from traditional sources of assets as security (such as land, receivables and equipment) to using intangible assets as security. Often the intangible assets will be included as the part of a package of assets secured. In IP rich companies, such as technology, life sciences, fintech and brand-led consumer products, IP assets form a critical part of the overall value of the borrower and have to be considered carefully by a lender from a risk and structuring perspective.

2. Consider Intangibles at Due Diligence Stage: When considering a transaction which will include intangibles in the secured assets portfolio a lender should investigate the borrower's IP portfolio, to satisfy itself that they constitute assets over which a loan can be secured.  Often intangible rights will be held in IP ownership structures in which the borrower has a role, the rights in the intangible assets may be held by more than once entity, or account will need to be taken of licensing structures, such as exclusive licences. If the borrower has a licence structure at the heart of its business care should be taken. It is not uncommon for commercial contracts dealing with certain types of intangibles to prohibit encumbering assets that are the subject of the licences. Sometimes a lender may need the borrower to procure third party consents to properly take security.  Require the borrower to produce a detailed schedule of its IP assets and to explain any IP ownership structure. Consider carefully any borrower qualification in relation to ownership representations or warranties in the area of IP intangibles.

3. Maintenance and Protection of the Secured Assets: Certain IP rights, such as patents, trade marks, domain names and certain types of designs need to be registered by the borrower to accrue value. These can be very valuable rights and so it is important that a lender understand what gives them intrinsic value. To maintain value registrations of rights of these will also need to be maintained. The security documentation should include appropriate provisions and mechanism requiring preservation of intangible assets.

4. Perfection and registration of security: If a lender takes an interest, including a security interest, in a registered IP right this will need to be registered at the appropriate registry as soon as possible after the transaction in order to put the world at large on notice of its interest. Failure to register security in an appropriate form can lead to impaired lender rights to rely upon the security over the asset. If not recorded in a register the security in relation to the asset may lose ranking, and may not be incapable of being relied upon in court, including in respect of a third party purporting to take an interest in the asset.

5. Enforcement: If a lender takes security over IP then the security documentation must facilitate enforcement should the borrower default in its obligations to the lender. What recourse to realise value in the IP assets will depend on the mechanisms dealt with in the security documentation, and account will need to be taken of the nature of the intangible assets when crafting those mechanisms. If the lender has a mortgage then, provided the assignment of the IP to the lender has been properly managed, the lender may have a right of sale. In other cases there may be a right to appoint a receiver, in which case the receiver powers will need to address the ability to deal with the IP assets.

If you are considering this topic, and would like further guidance on the ability to secure intangible assets, please contact Deirdre Kilroy, Technology & Innovation, Patrick Molloy, Finance and Capital Markets or your usual Matheson contact for more information.

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