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Carol Merritello Nielsen

Carol Merritello Nielsen

Attorney At Law

 

Carol started her legal career in Chicago over 25 years ago, first as an associate attorney working with a well-known IP litigation law firm, and then at another Chicago boutique law firm that has since merged into Barnes & Thornburg LLP. In 1996, Carol was recruited to work in Houston by a previous client who had become the leader of the intellectual property section of what was once one of Houston’s largest law firms. Carol was subsequently invited into the partnership and practiced with the firm until it closed in 1999. Carol then spent the next decade as a partner in two full-service Texas law firms and as special counsel with Baker Botts before launching her own firm in 2009. 


Since opening her own firm, Carol continues to practice exclusively in intellectual property law, with a practice emphasis on strategic planning and risk assessment, freedom to operate investigations, patent and trademark clearances, due diligence analysis, and the acquisition and licensing of intellectual property rights. As a small business owner, she is acutely aware of the importance of providing comprehensive intellectual property strategies which address the business needs of each client.


Carol is currently the Chair of the Chemical Practice Committee of the American Intellectual Property Law Association. She also plays an active role in several not-for-profit organizations including most recently as a certified USA Swimming Stroke & Turn Official and an apprentice Starter and Chief Judge with Gulf Swimming, the Southern Zone of USA Swimming. Prior to becoming an attorney, after graduating from University of Illinois Chicago College of Engineering, Carol was a chemical engineer with Stauffer Chemical Company, Bechtel Petroleum and GTE Communication Systems.


Admissions
Licensed to practice in Illinois and Texas
Member of the Trial Bar- Northern District of Illinois
Member of the United States District Courts for the Southern District of Texas and Northern District of Illinois
Member of the United States Court of Appeals for the Seventh and Federal Circuit
Registered Patent Attorney – United States Patent Office


Education
Master of Laws, Intellectual Property Law, The John Marshall Law School
Juris Doctorate, Chicago-Kent College of Law
Bachelor of Science, Chemical Engineering, University of Illinois at Chicago

 

Publications, Speeches and Presentations

“Aligning IP Strategies With Business Objectives Up and Down the Supply Chain,” American Intellectual Property Lawyers Association, 2013 MidWinter Institute (co-author)

 

“Divesting Biotechnology Programs from a Large Pharma Company to a Biotech Start-Up,” American Intellectual Property Lawyers Association, 2012 Annual Meeting (co-author)

 

“Doing Business In China,” American Intellectual Property Lawyers Association, Spring Meeting 2015 (co-author)


“Why eBay Really, Really Matters?” American Intellectual Property Lawyers Association, Spring Meeting 2008, Presenter & Author


"Compulsory Patent Licensing: Is It a Viable Option for the United States?" Michigan Telecommunications and Technology Law Review, 2007 (co-author)


"Successful Innovation Through Global Collaborations for Mutual Benefit," International Offshore Technology Transfers, Offshore Technology Conference, Houston, May 2007


"Women Hold The Keys To Their Success," National Law Journal, October 2006

 

"In New Horizons and at New Depths: Where Are the Ethical Boundaries and Potential Liabilities Facing the Offshore Industry?" Decision Making, Ethics, and Professionalism, Offshore Technology Conference, Houston, May 2006

 

 

 

Industries Served...

  • Analytical Instruments
  • Biotechnology
  • Chemical
  • Diagnostic
  • Life Sciences
  • Medical Devices
  • Oil & Gas
  • Pharmaceutical

 

Experience...

 

Having over 22 years of experience exclusively in the practice of intellectual properly law Nielsen IP Law is the one to trust.


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Practice Areas...

We focus on what matters to your business and can help you in all areas of intellectual property.

 


Intellectual Property Law and Practice

 

Resources...

 

We've put together some links related to intellectual property, some useful search engines, and other resources that we find helpful with intellectual property.


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