Paul Onderick patent attorney at Patterson Thuente IP
Paul Onderick patent attorney at Patterson Thuente IP

Paul C. Onderick

Partner - Patent Attorney

612.349.5766 |

    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.

    • Successfully utilized trade dress enforcement to stop  competitors who were copying the distinct look of our client’s world leading wearable magnification products.
    • 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.
    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
    In Black and White, The Ophthalmologist, December 2018
    Qualifying for Micro-entity status: Implications for Universities and TTOsTechnology Transfer Tactics, Vol. 7, No. 7 (pp. 97 – 112) July 2013
    The Request for Continued Examination (RCE) and How to Make Yours a PriorityIdeas 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 RightsIdeas on Intellectual Property Law, August/September 2009
    Reflections: From Patients to PatentsOptometric Management, March 2009


    “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
    Minnesota Intellectual Property Law Association
    American Bar Association
    Hennepin County Bar Association
    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

    Board of Directors, Central Minnesota Legal Services

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