Carol Merritello Nielsen
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 meet the business needs of each client.
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. Carol is active in several bar associations and currently is a member of the Board of Directors, American Intellectual Property Law Association. She also plays an active role in not-for-profit organizations such as USA Swimming where Carol is a certified Chief Judge, Starter, and Stroke & Turn Official.
- 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, 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