Carol Merritello Nielsen

Attorney at Law

Carol M. Nielsen
Attorney at Law

Carol’s practice is focused on intellectual property investigations, portfolio management and international procurement of patent and trademark rights. She has special expertise working with the pharmaceutical, chemical and oil and gas industry.

Having a deep understanding of the law and unique ability to spot legal issues, Carol handles clearance, due diligence, non-infringement, and validity investigations of complex technologies and serves as opinion counsel on various types of multifaceted investigations of global intellectual property rights.

Carol also serves clients in the procurement of intellectual property rights for new products, systems, processes, and designs. She is responsible for global patent and trademark portfolios and often joins forces with inhouse counsel to provide procurement and portfolio management support of innovative technologies.

Carol brings significant litigation experience to her legal services having handled disputes over intellectual property rights in Federal Court. She has held key roles on various trial teams, taken and defended depositions, and prepared key pleadings and legal briefs both in trial and appellate courts. Carol has appeared before the Federal Circuit Court of Appeals. She has successfully resolved contractual disputes for clients in both Texas and Illinois state courts. Carol has also handled trademark opposition and cancelation proceedings before the US Trademark Trial & Appeal Board.

Carol is an active member in several bar associations including the American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), and Houston Intellectual Property Law Association (HIPLA). She is a member of the AIPLA Board of Directors after leading the Chemical Practice and the Biotechnology committees and active participation on the Professional Programs and Legislation committees. Carol also volunteers her time with other non-profit organizations including USA Swimming, Gulf Swimming and Texas Interscholastic Swimming and Diving Officials.

Prior to becoming an attorney, Carol, a chemical engineer by training, was a process engineer with Stauffer Chemical Company, a design engineer with Bechtel Petroleum, and a manufacturing support engineer with GTE Communication Systems, now Verizon. Carol often draws on her past experiences to provide perspective and straight forward counsel to clients.

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

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