Overview
Marcelo leverages his experience working in the industry for nearly 20 years to counsel clients on:
- Risk mitigation in connection with development of new products
- Business deals, including U.S. and cross-border technology licenses and asset purchases and sales
- Collaborative research and development relationships, including compliance with the Bayh-Dole Act and iEdison reporting
Marcelo has represented startup and large clients in countries such as Denmark, Ireland, Israel and Spain in addition to the U.S.
Intellectual Property Industry Experience
Prior to law school, Marcelo worked in the industry in a variety of domestic and international roles, including:
- As managing director of a company based in The Netherlands, was responsible for marketing, intellectual property and manufacturing activities servicing Europe, the Middle East and Africa
- As director of intellectual property, led development of global IP strategies and managed outside counsel IP activities, trade secrets, patents and patent infringement risk, and conducted many merger and acquisition due diligence assessments
Continuing Education
- Strategic Growth, Chicago Business School, 2003
- Strategic Leadership Development, Center for Creative Leadership, 1999
- Technology Management, California Institute of Technology, 1998
- Marketing, London Business School, 1993
- Executive Course in Manufacturing Management, Darden Business School, 1990
Services & Industries
Credentials
Bar Admissions
Indiana
U.S. Patent and Trademark Office
Court Admissions
U.S. District Court for the Northern District of Indiana
U.S. District Court for the Southern District of Indiana
Languages
Spanish
Education
Indiana University Robert H. McKinney School of Law
J.D. cum laude, Order of the Barristers (2007)
Rose-Hulman Institute of Technology
B.S. in Electrical Engineering (1984)
Rutgers University
Completed course work toward M.S. in Statistics with concentration in Design of Experiments and Quality Control (1991)
Insights & Events
Latest
Insights
Other Perspectives
- Developments in Patent Law: 35 USC §§ 101 and 112(f)
Indianapolis Bar Association, November 2017 - Developments in Patent Law: 35 USC § 112¶1, and Inequitable Conduct
Indianapolis Bar Association, October 2017 - Intellectual Property Licensing Mechanics
Indianapolis Bar Association, February 2015 - University-Industry Partnering in IP Creation and Commercialization — Implications of Federal Funding
Indianapolis Bar Association, October 2014 - Intellectual Property Licensing Roundtable
Indianapolis Bar Association, September 2014 - Recent SCOTUS IP Decisions
indybar.com IP Section Update, June 2014 - Patent Law Year in Review — 2011
Indianapolis Bar Association, 2012 - Patent Fundamentals
Indiana Inventors Association, 2009 - Patent Review Gives Insight into Nonwovens Technology
Nonwovens Industry, May 1, 2009 - Assessing the Obviousness of Inventions
Patent Strategy & Management, May 2008 - Laboratory Notebooks as Evidence in Patent Litigation
Co-author with Nancy G. Tinsley, Intellectual Property Counselor, January 2007
Leadership & Community
Professional Associations
- Indiana State Bar Association
- Indianapolis Bar Association — IP Section (Chair, 2015-16; Vice-Chair, 2014-15)