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Breaking the Ice: Design patent leader looks to grow practice

Todd Nelson//July 20, 2023

James Rieke

James Rieke

Breaking the Ice: Design patent leader looks to grow practice

Todd Nelson//July 20, 2023

James Rieke is working to expand the design patent practice at Merchant & Gould’s Minneapolis office after joining the firm in June.

Rieke said design patents, which protect the way a product looks, can be a good option because they typically cost less and are available sooner than utility patents, which protect the way an article is used and works.

Rieke was a design engineer for a leading telecommunications firm before beginning his legal career.

“It gives me a useful perspective and technical approach to dealing with clients’ issues,” Rieke said of his engineering background. “It gives me the ability to speak in the terminology and language that a lot of technical folks, examiners and decision-makers speak.”

Rieke, one of the nation’s leading design patent filers, has more than 20 years of domestic and international experience. He co-chairs the Design Patent & Trade Dress Group at Merchant & Gould, a national technology and trial law firm.

Name: James Rieke

Title: Partner, Merchant & Gould’s Minneapolis office

Education: B.S. mechanical engineering, Iowa State University; J.D., William Mitchell College of Law

Q: Best way to start a conversation with you?

A: Most of my conversations start by commiserating about one of the Minnesota sports teams. There seems to be plenty of subject matter discussed in that area. I’m a big Minnesota sports fan, love the Vikings and Timberwolves and all the rest.

Q: Why law school?

A: I knew from a young age that I wanted to be an attorney. I grew up in a family of law. My father was a judge. The technical side of things appealed to me as well in getting my engineering degree, but I learned that I really like the broader exposure to some of these products and issues. I enjoy dealing with some of the legal issues that legal IP work provides.

Q: Pet peeve?

A: Road construction and potholes. One pet peeve professionally maybe is the decrease in in-person meetings and interactions, unfortunately. I love to go see clients, people in person, so I make an effort to do that.

Q: Best part of your work?

A: Working in patents, seeing new inventions, seeing things right on the cutting edge. But also, and maybe more so, is the people. In patents you get to deal with a lot of fascinating people, whether they’re engineers who are at the top of their field or CEOs or decision-makers for their companies. There’s an endless number of interesting people that I get a chance to have conversations with.

Q: Most challenging?

A: Probably right-sizing the legal approach for clients, for their needs. There often are many legal avenues to go down and options, so finding that balance and what’s right for clients.

Q: Favorite activity away from work?

A: Probably getting out on the lake, whether it’s water sports or out at the cabin or tubing with the kids. The outdoors is my favorite place to be, and out of the lake.

Q: Where would you take someone visiting your hometown?

A: I grew up in Burnsville, so maybe the biggest attraction there, I guess, is Buck Hill. Maybe go skiing at Buck Hill.

Q: Legal figure you admire?

A: My dad, (Paul V. Rieke). My dad was an administrative law judge here in Minnesota most of my life growing up. He taught me a lot about treating all people fairly and the importance of the legal profession and having high regard for that.

Q: Misconception that others have about your work?

A: The speed at which things happen. It’s not like TV, where trials, things happen overnight. The court system is slow to move things through typically, and the patent office is absolutely the same. Clients and friends and colleagues are always shocked at how slowly things happen.

Q: Favorite book, movie or TV show about lawyers?

A: “To Kill a Mockingbird.” I read that early on in my high school days, and it holds up. I saw the play in London last year. It’s a favorite.

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