Attorney Spotlight: James T. Nikolai

Jim Nikolai’s introduction to intellectual property law occurred at a young age. Before he could even read, he listened as his father, Tom Nikolai, dictate patent applications at the kitchen table and paged through copies of the Official Gazette of the Patent Office looking at the drawing of newly issued patents published there.

After graduating from the University of Minnesota and while attending the William Mitchell College of Law, Jim took a job working for his dad in connection with several upcoming patent infringement trials. Over the next thirty-six years Jim and Tom worked together operating a very successful boutique IP firm. In December, they and their partner, Chuck Mersereau, together with their entire support staff, joined forces with DeWitt.

“I have been blessed to be mentored by a fantastic lawyer and work with very creative clients,” Jim said. “I am really looking forward to being able to expand the services we can offer those clients now that we are all part of the DeWitt team.”

Jim is justifiably proud of his work implementing intellectual property strategies that kept clients out of trouble and, at the same time, make them attractive acquisition targets.

Jim explained, “At the core of every successful start-up company are smart, hard-working people with a great idea” and he cited several examples from his career.

• Cardiac Pacemakers, Inc., now part of Boston Scientific, achieved early success because it adopted superior battery technology and it was able to prevail against an onslaught of patent suits brought against it by more established competitors.


• St. Jude Medical, now part of Abbott, achieved success due to its innovative heart valve design and because of the successful defense of a patent suit that settled in the middle of a trial.


• AGA Medical, now part of Abbott, was successful due to unique occlude designs and because of the successful defense of a patent infringement suit and the creation of a patent portfolio.

Jim also has extensive experience outside of the medical products industry. He, together with Tom and Chuck, developed a significant patent portfolio for a packaging company, and for a ladder rack company which were both later acquired. Other notable representative clients include a valve control company, a cookware company, a work vehicle company, jewelry manufacturers and designers, furniture companies, a weather forecasting company, fishing equipment manufacturers, and manufacturers of agricultural equipment, food products, and animal feed additives.

Jim helps clients protect their own intellectual property and avoid infringing the intellectual property rights of others. He also helps clients with transfer and licensing of intellectual property and related assets. Branding, trademark, and copyright matters are a significant part of Jim’s practice.

“No matter how good a product is, the product will only be successful if the product is appropriately branded and marketed—and the last thing someone needs immediately after launching a product is the business disruption associated with a claim of trademark infringement.”

Jim assists companies select appropriate marks, which is a particularly sensitive matter for medical products companies. “I handled trademark clearance for Cardiac Pacemakers for more than twenty years, clearing thirty or more marks a year. And they never had a trademark claim brought against them under my watch.”

And when the in-house lawyers he worked with at Cardiac Pacemakers moved on to other companies, they sought Jim out to handle trademark work for their new employers. Lawyers from firms outside the U.S. also look to Jim to handle trademark matters on behalf of their most important clients.

Jim is also involved in the community. For more than fourteen years he served as an elected member of the ISD 197 School Board, serving as board chair for most of his tenure. Under Jim’s leadership, the school district maintained a balanced budget, built two new middle schools, renovated its other facilities and pioneered all-day kindergarten. “It was a lot of work, but the work gave me a better perspective on how larger organizations operate and an opportunity to give back to the community I have lived in since a child.” One of his current hobbies is photography.

“My greatest accomplishment are the six kids we raised.” Jim and his wife, Beth, raised five daughters and a son in their Eagan, Minnesota home. Beth works as a pharmacist. Two of their daughters are teachers, two are lawyers, one is an intensive care nurse and their son works in the governmental affairs department of a large bank.

Jim and Tom Nikolai, and Chuck Mersereau all work in DeWitt’s Minneapolis Office. Jim can be reached at (612) 305-1518 or via e-mail at jtn@dewittllp.com.