Carol A. Marmo
Carol Marmo is a registered patent attorney that represents clients in the full spectrum of intellectual property law, including development and management of worldwide patent and trademark portfolios, preparation and prosecution of patent applications in the United States and internationally, preparation of patentability, invalidity, infringement and right-to-use opinions, preparation, negotiation and enforcement of non-disclosure, research and development, and licensing agreements, due diligence of intellectual property assets, and preparation and prosecution of trademark applications. She works closely with clients to provide customized intellectual property law services and procure patent protection and competitive advantages in a variety of technical fields with emphasis in the chemical, e.g., organic, pharmaceutical, nuclear, bio-chemical and electro-chemical, biomedical, e.g., devices and kits, biotechnical, and mechanical arts.
Prior to joining Eckert Seamans, Carol served as in-house intellectual property counsel at two Fortune 100 companies involved in the research, development, and commercialization of chemical compounds and processes. Before practicing law, she worked as a chemical engineer for one the country’s most prominent suppliers to the nuclear power industry. Carol’s combined in-house and private practice experience provides her with the ability to recognize business consequences of legal advice, develop and articulate a clear understanding of the organizational strategy from multiple perspectives, and find creative solutions to complex legal problems.
- Experienced in all phases of preparing and prosecuting domestic and international patent applications in diverse fields, including pharmaceutical agents, medical implant devices, medical diagnostic and treatment processes, immunological processes and compounds, chemical processes and compounds, materials science, metallurgy, chemical and mechanical systems for power generation, cementitious and fiber-reinforced compositions, biological fuel processes and compounds, and personal care compositions.
- Experienced in planning, negotiating, and drafting a broad range of agreements, such as technology and licensing agreements for the transfer of intellectual property assets.
- Counsels small and large companies, universities, and individual inventors in intellectual property matters, including providing patentability studies, non-infringement opinions, freedom to use opinions, and advice regarding the creation, exploitation, and enforcement of clients’ patent portfolios.
- Has represented an international company in managing its global patent portfolio, overseeing a team of patent attorneys, filing and prosecuting domestic and international patent applications in various technical fields, and preparing infringement opinion work.
- Pittsburgh Intellectual Property Law Association, President
News and Insights
- “Leveling the Playing Field Against Patent Trolls,” co-presenter, Eckert Seamans’ Continuing Legal Education Seminar, August 2014.
- “Understanding the America Invents Act: Sweeping Change of U.S. Patent Prosecution Practice,” co-presenter, Eckert Seamans’ Continuing Legal Education Seminar, August 2012.
- “The America Invents Act – A Discussion on The Significant Changes to Intellectual Property Law,” co-presenter, Eckert Seamans Teleseminar, September 28, 2011.