Paul C. Onderick, O.D.

Partner - Patent Attorney


Patent Lawyers

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. 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

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

Minnesota Intellectual Property Law Association
Minnesota State Bar Association
Hennepin County Bar Association

Presentations

“The New Patent Landscape: What Innovators in Low Vision Rehabilitation Should Know,” Envision Conference, September 7 – 10, 2016
“The New Patent Landscape: What Innovators in Low Vision Rehabilitation Should Know About Recent Changes to US Patent Laws,” Envision Conference, September 9 – 12, 2015

Publications

Qualifying for Micro-entity status: Implications for Universities and TTOs, Technology Transfer Tactics, Vol. 7, No. 7 (pp. 97 – 112) July 2013
The Request for Continued Examination (RCE) and How to Make Yours a Priority, Ideas on Intellectual Property Law, April/May 2013
Expanded Prior User Rights Under the America Invents Act
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

Paul C. Onderick

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612.349.5766 onderick@ptslaw.com