Carey C. Jordan is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Houston office. Carey focuses her practice on patent prosecution, transactions and strategic portfolio management in the chemical, energy and alternative energy sectors.
Carey’s practice involves developing worldwide intellectual property portfolios for both start-up and established companies, including establishing and formulating patent procurement strategies; obtaining domestic and foreign patents; handling complex prosecution procedures, such as reexaminations; and negotiating and securing technology license and acquisition agreements. Her practice includes due diligence investigations, IP transactions and conducting freedom-to-operate, patentability, validity and noninfringement analyses. Carey’s practice also includes trade secret counseling and the development of trade secret protocols for the protection of critical information for clients on a global basis.
On the clean technology front, Carey has handled IP matters relating to a myriad of clean technologies, including biomass-to-fuels, algae to fuels, algae-to-fuel additives, bio-based gas additives, gas-to-liquid processes and gas-to-fuels technologies. She has drafted patent applications and performed due diligence investigations for fuel cells and carbon dioxide capture and sequestration technologies. She also has experience with nanotechnology relating to solar energy.
On the traditional upstream energy front, Carey has handled IP matters involving all aspects of exploration and production, including those relating to oil sands, tar sands, tight gas, shale, coal, off-shore wells, drilling, cementing, stimulation, completion and production. On the downstream end, she has handled IP matters relating to technologies involving polymerization, catalysis, refining operations, pipelines, and fuel and industrial chemical production.
On the end-product side, Carey has handled a variety of IP issues relating to products such as textiles, fibers, yarns, nonwovens, films, laminates, paints, diapers, carpets and personal care products.
Carey’s practice has involved extensive patent prosecution and portfolio management. In her career, she has drafted over 175 U.S. patent applications and managed a docket consisting of over a thousand patents and patent applications, both U.S. and foreign.
Carey is admitted to practice in Texas and registered to practice before the U.S. Patent and Trademark Office. She was recognized by Chambers USA as a leading intellectual property lawyer in Texas and by The Legal 500 United States as a leading patent prosecution lawyer. Carey is a member of the American Intellectual Property Law Association (AIPLA) and currently serves as the chairperson of the AIPLA’s Women in IP Law Committee. She is secretary of the IP Section of the State Bar of Texas and board member of the Houston Intellectual Property Law Association. Carey also proudly serves as a member of the Advisory Board for the School of Materials Science and Engineering at Clemson University.
Prior to joining McDermott, Carey was a partner at an international law firm. She received her M.S. degree in polymer chemistry and fiber science from Clemson University.
Representative Experience
IP Transactional Matters
- Extensive due diligence investigation and analyses that concluded with the negotiation of licenses and an asset purchase deal for “game changing” upstream technology
- Client counseling and patent prosecution for biofuels technology
- Patent prosecution relating to algae-based biofuels technologies
- Client counseling and patent portfolio management of a large patent portfolio for affirmative protection, defensive protection and offensive purposes
- Assistance with risk management and freedom-to-operate considerations, due diligence investigations, transactional assistance on proposed transactions with third parties, trade secret protection counseling and confidential information management
- Counseling and portfolio development and management for modular GTL technologies based on Frischer Tropsch processing and steam methane reforming
- Counseling and portfolio development and management relating to gas-to-fuels technologies
- Patent prosecution with respect to fibers and polymers technologies
- Due diligence investigation relating to a Malaysian joint venture with a U.S. think tank operation
- Management, preparation and prosecution of a patent portfolio for a fuel-cell research project
Litigation
- Representation of defendant in a trade secret case which successfully settled before the preliminary injunction hearing
- Representation in a patent infringement case involving fasteners for flow measurement equipment for liquid and natural gas pipelines
- Representation of a client in a patent infringement case involving CAT scan and radiation therapy technology
- Representation of plaintiffs in infringement litigation involving a business method patent related to electronic futures trading exchanges
Articles
- Published article in Wind Power Monthly regarding wind patent landscape
- Published article in Wind Technology with Stefan Schmitz, McDermott Will & Emery London Office
- Published article in EuroBiz (with McDermott Will & Emery’s China office) regarding VC funding in China and IP rights
- Published article on global patent portfolios; appeared in the August/September issue of Executive Counsel
- Published article in McDermott’s Inside M&A Newsletter for July/August 2010 entitled “The Top Five IP Traps in M&A Transactions”
- Published Article in National Law Review – “The Top Five Intellectual Property Traps in M&A Transactions
- Published article in Houston Business Journal – “IP in M&A Transactions”
- Published article in conjunction with AIPLA Spring meeting in New York City entitled “Due Diligence Pointers – Top Potential IP Issues in M&A Transactions”
- Submitted article on Stanford v. Roche case that the Supreme Court agreed to hear regarding the Bayh-Dole Act for Renewable Energy Focus
- Submitted article on Stanford v. Roche case that the Supreme Court agreed to hear regarding the Bayh-Dole Act for Solar Today
- Interviewed by Windpower Engineering on the Stanford Case and its impact on alternative energy companies receiving government funding
- Platts Inside Energy December issue – “Experts Fear Court Could Chill DOE/University Pacts”
- Published article in Fuels Magazine on the Risks and Realities for Renewable Energy IP
- Co-authored article with Henry Chen and Angel Wang in Enterprise China – “Mind Over Money”
- Published article in Newlegal Review – “Be Sure to Hit the IP Rights Target in Mergers and Acquisitions”
- Article in Baker Botts Intellectual Property Report – “Competitive Intelligence Through patent Analysis: A Promising But Risky Proposition”
Presentations
- SBOT 2011 Spring Meeting – “IP Indemnities – Boilerplate Beware!!”
- AIPLA 2011 Annual Meeting: moderated panel on “Leading Women in Mergers and Acquisitions”
- AIPLA 2010 Spring Meeting – “The Deal from Hell”
- AIPLA Annual Meeting, October 2010 – Panel Regarding Client Relationships
- HIPLA Fall Institute – IP Due Diligence – Key Issues and Where to Spot Them
- >Texas Bar Course Director – Spring Workshop 2009
Selected to
- Texas State Bar Secretary 2011
- Chair of Women in IP Law Committee 2009-2011; AIPLA Committee Member: Chemical Practice; Diversity in IP Law; IP Practice in the Far East; Mergers & Acquisitions; Patent-Relations with the USPTO; Professional Programs; Trade Secret Law
- HIPLA Board Member 2011-2012
- Texas Super Lawyers 2011
- Texas Rising Stars 2009
- Texas Rising Stars 2008
- Texas Rising Stars 2007
- Texas Rising Stars 2006
- Texas Rising Stars 2004
Education
- University of Houston Law Center, J.D. (magna cum laude), 1997
- Clemson University, M.S., 1994
- Clemson University, B.S. (magna cum laude), 1993
