Carol Merritello Nielsen
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 past member of the AIPLA Board of Directors after leading the Chemical Practice and Biotechnology committees and active participation on the Legislation committee. Carol volunteers her time with the Harris County Dispute Resolution Center and with other non-profit organizations such as USA Swimming and the local swim council, Gulf Swimming.
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.
- 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
- Master of Laws, Intellectual Property Law, UIC School of Law
- Juris Doctorate, Chicago-Kent College of Law
- Bachelor of Science, Chemical Engineering, University of Illinois at Chicago
Publications, Speeches and Presentations
- How Your Draft It Matters, American Chemical Society, Spring 2023 Conference, Presenter
- Strengthening Your Patent Rights in Light of Recent Federal Circuit Decisions, American Chemical Society, Spring 2023 Conference, Presenter
- USPTO-FDA Joint Public Listening Session, Statement Made on Behalf of American Intellectual Property Law Association, January 19, 2023
- To March-In or Not March-In: That is the Question, Houston Intellectual Property Law Association & BioHouston Expert Panel Discussion, September 14, 2022, Moderator
- Infringement Including Doctrine of Equivalents, American Intellectual Property Law Association Advanced Chemical/Pharma Patent Practice Institute, May 20, 2022, Presenter
- Aligning IP Strategies With Business Objectives Up and Down the Supply Chain, American Intellectual Property Law Association, MidWinter Institute 2013 (co-author
- Divesting Biotechnology Programs from a Large Pharma Company to a Biotech Start-Up, American Intellectual Property Law Association, Annual Meeting 2012 (co-author)
- Protecting Trade Secrets in China, American Intellectual Property Law Association, Spring Meeting 2011, co-author Xiaobing Feng, ExxonMobil Investment Co., Ltd. Shanghai
- Why eBay Really, Really Matters? American Intellectual Property Law Association, Spring Meeting 2008, Author and Panelist on May 14, 2009, Remedies in a Post-eBay World
- 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