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Paul C. Onderick, O.D.
Partner

Paul Onderick is a patent attorney and licensed optometrist whose practice focuses on assisting clients in seeking patent protection and developing and managing patent portfolios.

Much of Dr. Onderick’s practice at Patterson Thuente focuses on seeking to protect innovations in technologies that relate to his background in optometry, including optical products such as microscopes and digital projectors; clinical and surgical instrument-related products; heads-up and night vision displays; and laser-refractive technologies. He also works with manufacturers of medical devices, biomedical instruments, and automated and robotic manufacturing equipment. Dr. Onderick also assists clients with obtaining patent protection for mechanical devices.

Professional Experience

Before becoming a patent attorney, Dr. Onderick was a clinical optometrist for nearly two decades. He was president and owner of Professional Eye Care, Ltd., where he cared for patients and managed the day-to-day operations of the business.

Dr. Onderick’s broad scientific background, which includes areas of optics, medicine, biology, biotechnology, chemistry and physics, coupled with first-hand knowledge of the challenges of running a business, allows him to relate to clients on many levels. He enjoys developing intellectual property strategies that contribute to the success of the intelligent and enthusiastic innovators who are his clients.

Case Studies

  • Completed appeal to the Board of Patent Appeals and Interferences on a patent application for a surgical microscope including making oral arguments before the board. The appeal led to the board reversing the USPTO examiner and allowance of all pending claims in the application.
  • Prepared Patent Owner’s Amendment and Response in an ex parte reexamination that led to issuance of a Reexamination Certificate affirming the patentability of all claims in the reexamined patent, which related to computerized microscope-image processing.

Other

Board of Directors, Central Minnesota Legal Services

 

 
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Paul C. Onderick, O.D.

612.349.5766
onderick@ptslaw.com

Practice Areas
Patent Prosecution
IP Portfolio Management
Technology Review and Product Clearance

Technology Areas
Chemical
Physics/Mechanical
Medical Devices
Optics/Optical Instruments

Education
Kentucky Wesleyan College, Chemistry, Alpha Chi Honor Society, CRC Freshman Chemistry Award
Indiana University, B.S., Optometry, 1980
Indiana University, Doctor of Optometry, 1982
University of Minnesota Law School, J.D., 2003, cum laude; Minnesota Intellectual Property Review, articles editor
Admissions
Supreme Court of Minnesota
U.S. District Court, District of Minnesota
U.S. Court of Appeals for the Eighth Circuit
United States Patent and Trademark Office
 
Memberships
Hennepin County Bar Association
Minnesota Intellectual Property Law Association
Publications
The Request for Continued Examination (RCE) and How to Make Yours a Priority, Ideas on Intellectual Property Law, April/May 2013
USPTO's Narrow Interpretation of Prior Art Could Make Grace Period Exceptions "All But Non-Existent," The Tech Transfer Blog, October 2012
Interested in Patent Protection? Beware of Statutory Bars, University of Minnesota Duluth (UMD) Center for Economic Development Newsletter, June, 21, 2012
Recent Court of Appeals Decision Strengthens Design Patents, University of Minnesota Duluth (UMD) Center for Economic Development Newsletter, May 24, 2012
Even a Patent Can be Decorative, Minnesota Business Magazine online, December 7, 2009
Don't "Over-License" Your Patent Rights, Ideas on Intellectual Property Law, August/September 2009
Reflections: From Patients to Patents, Optometric Management, March 2009
 
 

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