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Mark E. Nikolsky
Alternate image for Mark E. Nikolsky

Mark E. Nikolsky

Partner

973.639.6987
Newark
mnikolsky@mccarter.com

Mark’s intellectual property counseling and patent prosecution skills are highly sought by technology clients as a result of his Computer Science background and his ability to implement cost-efficient and effective strategies for protecting complex technologies.

Mark Nikolsky is a partner and registered patent attorney focusing on obtaining, licensing, and enforcing Intellectual Property rights, including patents, trademarks, copyrights and trade secrets. He regularly counsels clients on how best to protect their innovations using IP.

A substantial portion of Mark’s practice is devoted to representing clients before the U.S. Patent and Trademark Office (USPTO) to obtain patents covering technologies in the software, electrical, and mechanical fields. Examples of some of the technologies Mark has protected include computer software and hardware, digital and analog systems, optoelectronics, semiconductor fabrication processes, plasma physics devices, telecommunications, distributed computing systems, and other types of technologies. He interacts with clients on a nearly daily basis to draft and refine patent applications and advise on IP protection strategies.

Mark frequently investigates the patent rights of others and prepares opinions including patent freedom-to-operate, invalidity, and patentability opinions. He has participated in litigation proceedings involving intellectual property matters including patent, trademark, and copyright infringement. Additionally, Mark has experience negotiating and drafting business-related agreements including technology licensing, confidentiality, and non-disclosure agreements. Mark is a member of the Association for Computing Machinery (ACM) and the Institute for Electrical and Electronics Engineers (IEEE, and he also gives presentations to small business and educational entities regarding IP protection.

In addition to his patent prosecution and IP counseling practice, Mark has been lead counsel in a number of inter parties review (IPR) and other post-grant review proceedings before the Patent Trial and Appeal Board (PTAB) of the USPTO, successfully challenging the validity of a number of patents in streamlined proceedings under the America Invents Act. Additionally, Mark has successfully argued appeals of PTAB decisions before the U.S. Court of Appeals for the Federal Circuit (CAFC), where he has been lead appellate counsel.

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Services

Intellectual Property
Patents
Post-Grant Proceedings

Education

Seton Hall University School of Law JD, 2001
The College of New Jersey BS Computer Science, 1998

Bar Admissions

New Jersey
New York
U.S. Patent & Trademark Office

Court Admissions

U.S. District CourtDistrict of New JerseyU.S. District CourtSouthern District of New York

Memberships & Certifications

American Bar Association

Association for Computing Machinery

Bergen County Bar Association
Past President, Young Lawyers Division

Institute of Electrical and Electronics Engineers

New Jersey Intellectual Property Law Association

New York State Bar Association

Insights Speaking Mic and Bottles
Events|Webinar
Representing the Startup and Emerging Technology Company
NJSBA/NJICLE
7.27.2022
Insights Publication Magazine & Glasses
News
2017 Chief Medical Officers Roundtable: Advances in Patient Care for Women
Commerce Magazine
3.31.2017
Insights Awards Trophies
News|Press|Recognition
IP Litigation Department of the Year Profile
New Jersey Law Journal
11.15.2016
Insights Awards Top Stars
News|Recognition
New Jersey Intellectual Property Group Receives Litigation Department of the Year Award
9.19.2016
Insights News Contracts Stack
News|Quote
PTAB Nixes Tracking Patent In Post-Grant Review
Law360
8.3.2016
Insights Speaking Microphone Women
Events|Sponsor
McCarter & English Hosts Screens, Conflict and the Ethical Patent Practice CLE Program
New Jersey Intellectual Property Law Association's (NJIPLA)
5.11.2016
Insights Speaking Panel Mics
Events|Speaking Engagement
Alice-Proofing Patent Claims and Related Issues
New Jersey Intellectual Property Law Association (NJIPLA)
11.12.2015
Insights Awards Top Stars
News
McCarter IP Group profiled by the New Jersey Law Journal – Finalists for IP Litigation Department of the Year
New Jersey Law Journal
5.25.2015
Insights Awards Stars
News|Recognition
McCarter Litigation Group Finalists for General Litigation Department of the Year
New Jersey Law Journal
5.21.2015
Insights News Contracts Stack
News
America Invents Act Proving to Be Good for Trials and Entrepreneurs
NJBIZ
8.4.2014
Insights News Printing News
News
Mark Nikolsky, and Simone Wilson-Brito profiled in New Jersey Law Journal’s “New Leaders of the Bar”
New Jersey Law Journal
7.28.2014
Insights Awards Trophies
News|Recognition
McCarter’s Mark Nikolsky and Simone Wilson-Brito named to New Jersey Law Journal’s 2014 “New Leaders of the Bar”
7.14.2014
Insights Publication Magazine & Glasses
News
USPTO Nixes CoreLogic Real Estate Patent In AIA Review
Law360
2.7.2014
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