Caroline Marshall
As both a patent attorney and litigator, Caroline delivers strategic, holistic IP advice that supports business goals. Drawing on over two decades of experience, she combines technical knowledge, legal expertise and commercial acumen to help clients secure IP rights and navigate oppositions and disputes.
Caroline manages a diverse portfolio of patent and design work, supporting clients across a range of industries, including medical devices, manufacturing, automotive and textiles. She drafts and prosecutes UK and European patent applications, advises on infringement and validity, and represents clients in EPO oppositions and appeals.
She also provides strategic IP audits, freedom-to-operate (FTO) analyses, and helps clients structure their IP portfolios to support investment, licensing and product launches.
In addition to her technical work, Caroline leads the firm’s assignments team, advising on ownership issues and IP-related transactions. She has also served on the firm’s executive board, contributing to the development of internal processes designed to deliver the highest levels of client service and value.
Caroline began her career as a patent examiner at the UK Intellectual Property Office (UKIPO), applying her background in physics. She later trained and qualified as a patent attorney to combine her technical expertise with her commitment to helping clients protect and commercialise their ideas.
Caroline is a dedicated mentor, supporting junior attorneys as they develop their skills and confidence. Her approachable style fosters collaboration and helps prepare the next generation of patent professionals.
- Key clients include Baxter, Curt G Joa, Novo Nordisk, Stretchline and Wattbike.
- Successfully representing Novo Nordisk in high-profile EPO oppositions and appeals, particularly in the field of transcutaneous drug delivery technologies
- Supporting clients in contentious proceedings before the Intellectual Property Enterprise Court (IPEC) and the UKIPO
- Notable cases include:
- EPOCH Company Ltd v Character Options Limited [2017] EWHC 556 (IPEC)
- Curt G Joa, Inc. v Fameccanica Data SpA [2017], EWHC 1251 (IPEC)
- UK IPO Decision No. O/741/18 – Cancellation of Registered Design No. 2086306 in the name of Jaguar Land Rover pursuant to Application No. 51/17 by INEOS Industries Holdings Limited.
EPO opposition highlights
- EP1448256B1 TecPharma Licensing AG v Novo Nordisk A/S – successful defence (opposition rejected and patent maintained as granted) of a patent relating to a safety needle assembly for a medical injection device, the assembly including a telescopically movable, spring biased shield and a locking element to prevent further movement of the shield.
- EP1283916B1 Ulster Carpet Mills (Holdings) Limited v Brintons Limited (T0468/08-3.2.06) – successful opposition (patent maintained in limited form) of a patent relating to a carpet weaving loom including at least one tuft forming unit for forming sequentially yarn tufts of a number of different colours, means to receive and hold at a yarn tuft forming sites yarn tufts supplied sequentially by the tuft forming unit, and transfer means to transfer all of the tufts held by the yarn tuft holding sites simultaneously to their corresponding weaving points.
- EP2405040B1 Stretchline Intellectual Properties Limited v King Yeung Yu (T0229/16-3.2.06) – successful opposition (patent revoked) of a patent relating to a method of manufacturing a penetration-resistant fabric, the method preventing yarn breakage during the manufacturing process.
- EP2282650B1 Stretchline Intellectual Properties Limited v Sigvaris AG (T0634/16-3.2.06) – successful opposition (patent revoked) of a patent relating to a self-fixing tape for a garment such as hold-up stockings, the tape including a coating on a knitted or woven support where the coating has immediate and significant adhesive properties to ensure it is held on the skin of a wearer.
- EP3105813B1 Intramicron, Inc. v Frauenhofer-Gesellschaft – successful defence (opposition rejected and patent maintained as granted) of a patent relating to an energy storage pack including a plurality of energy storage cells and a thermal management system, wherein the thermal management system includes one or more thermal conductive microfibrous media and one or more active cooling structures.
- EP2515992B2 Novo Nordisk A/S v Rani Therapeutics, LLC (T1566/21-3.2.02) – successful opposition (patent maintained on basis of claims of Auxiliary Request 7) of a patent relating to an ingestible device in the form of a capsule suitable for swallowing into a lumen of a gastrointestinal tract of a patient, the device including a tissue penetrating member formed from a solid therapeutic agent including at least one therapeutic agent that would chemically degrade or impose a deleterious effect if released within the lumen of the gastrointestinal tract, the tissue penetrating member being retained within the capsule until it is advanced from the capsule and into the lumen wall.
- EP3461478B1 Novo Nordisk A/S v Rani Therapeutics, LLC (T1940/22-3.2.02) – successful opposition (patent revoked) of a patent relating to an ingestible device for delivery of a therapeutic agent into a lumen wall of a gastrointestinal tract of a patient.
- EP2544668B1 Novo Nordisk A/S v Rani Therapeutics, LLC (T0501/22-3.3.07) – successful opposition (patent revoked) of a patent relating to a therapeutic agent preparation in the form of a solid tissue penetrating member sized and configured to be contained in a swallowable capsule and delivered from the capsule to penetrate and be advanced into a lumen wall of a lumen of the intestinal tract.
- EP3677231 Hermann Ultraschalltechnik GmbH & Co KG v Curt G Joa, Inc. – (T1147/25-3.2.04 – under appeal) – successful defence (patent maintained on basis of claims of Auxiliary Request 3) of a patent relating to an apparatus for manufacturing an elastic composite structure including a bonding unit to bond a first web layer to a second layer and configured to anchor an elastic thread within a passage formed between at least one pair of adjacent ultrasonic bonds where the passage has a cross-sectional area that is smaller than a cross-sectional area of the elastic thread in a non-tensioned state, and a welding line on a face of the bonding unit includes at least one notch positioned between a pair of projections, the notch having a cross-sectional area than is smaller than the cross-sectional area of the elastic thread in the non-tensioned state.
- EP3653223B1 Novo Nordisk A/S v Rani Therapeutics, LLC (T0081/24-3.2.02) successful opposition (patent revoked) of a patent relating to a swallowable device for inserting a therapeutic agent preparation into a wall of a patient’s gastrointestinal tract.
- UK and European Patent Attorney
- Higher Courts Litigation Certificate (Patent Attorney Litigator)
- LLM, Intellectual Property Litigation, Nottingham Trent University
- Postgraduate Certificate, Intellectual Property Litigation, Nottingham Trent University
- BSc, Physics, Loughborough University
- Member of the Institute of Physics
- Member of UNION
Caroline demonstrates a strong ability to translate invention disclosures into cohesive and robust patent applications. She responds effectively to challenges during prosecution, strengthening arguments and identifying support within the specification to progress applications towards grant. She maintains a professional and proactive approach, ensuring clear communication and providing advance notice of key filing deadlines.
Caroline builds long-lasting relationships with her clients. She can speak the technical language, allowing her to swiftly and efficiently translate inventions into strong patent applications. Caroline’s understanding of technology, combined with her advocacy skills, ensures she effectively argues her case during the examination stage. It is very rare that she doesn’t get a patent through to grant.
“Dedicated, strategic and commercially minded” textiles specialist Caroline Marshall can be found in the engineering and designs group - her knowledge base is as broad as it is wide.
- IAM Patent 1000: Prosecution
- MIP IP STARS: Patent Star
- MIP IP STARS: Top 250 Women in IP
About Caroline
Experience
Areas of expertise
Qualifications
Testimonials
Awards
How We Live Our Values: Ambition
I'm driven by curiosity, whether it’s exploring emerging technologies, evolving IP case law, or the strategic goals behind a client’s innovation. I don’t just want to understand how something works, but why it matters commercially. That way, I can help support an IP strategy that aligns with the client’s goals and delivers real value.
In My Own Words
The most rewarding part of my role is seeing the tangible impact that a well-structured IP strategy can have on a client’s success. Whether it is securing a patent that supports a product launch or winning an opposition that protects a client’s market position, I take pride in helping turn innovation into commercial reality. I also value mentoring the next generation of patent attorneys, sharing knowledge, building confidence, and supporting their growth into trusted advisors.
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