Article Date: 3/1/2009

From Patients to Patents
reflections THE HUMAN SIDE OF OPTOMETRY

From Patients to Patents

Optometry enabled me to become an effective intellectual property lawyer.

PAUL C. ONDERICK, O.D., J.D. MINNEAPOLIS, MINN.

After 18 years of clinical practice, I took an unusual, and perhaps unique, turn in my career path — I became a patent attorney.

Burnout

In 1997 I was a practice owner immersed in the day-to-day mix of caring for patients, managing staff and dealing with third-party payers. I kept an arduous schedule, which eventually made me long for career in a different facet of optometry.

One afternoon, a long-time patient of mine, Jim, presented for a spectacle change. He and his family had been patients of mine for more than a decade, so it wasn't out of the ordinary for the conversation to turn personal.

Jim was the managing partner of a then small intellectual property law firm, so we shared stories about the challenges of running our respective businesses. He flippantly remarked that my O.D. technical background qualified me to take the patent office registration exam and become a patent agent. At the time, I laughed off his remark.

Shortly thereafter, I went to my high school reunion, and one of my former classmates said to my wife: "I remember Paul as the kid who always wanted to know how everything worked." That's when Jim's comment struck a chord.

Dr. Onderick inspects an intravascular treatment device prototype to prepare a patent application.

Career reinvention

Less than a year later, I sold my practice, and I began working for other doctors while studying for the patent office registration exam. After becoming a registered patent agent, I worked part-time as a technical consultant for Jim's law firm. While a law school student, I was a part-time clerk there.

I've been an associate attorney now for five years. Much of my practice focuses on protecting intellectual property in ophthalmology-related technologies. My clients include large, multinational corporations, such as Carl Zeiss Meditec, and small, up-and-coming medical device manufacturers whose entire existence depends on securing exclusive rights to a single technology.

I enjoy writing patent applications and other legal documents; managing the intellectual property assets of my clients; and catching a first glimpse at technological advances that, with my help, could someday improve lives.

Aside from using both my clinical and technological background as an O.D. to assist my clients, the communication skills I developed in clinical practice have been extremely valuable in working with clients as well. Just as optometrists must be attentive listeners and effective communicators to make a proper diagnosis, patent lawyers must absorb large amounts of information on an invention to write an effective patent application or develop a legal strategy.

Because making this career change reinvigorated my excitement for optometry and has allowed me to continue making a mark in eye care, leaving behind my practice and returning to college in my mid-40s has been well worth it. If private practice is taking its toll on you, investigate other options. I did, and it's one of the best decisions I ever made. OM

Dr. Onderick is with Patterson, Thuente, Skaar and Christensen in Minneapolis, Minn.


DO YOU HAVE A MEMORABLE EXPERIENCE YOU'D LIKE TO SHARE? DISCUSS YOUR STORY WITH JENNIFER KIRBY, SENIOR ASSOCIATE EDITOR OF OPTOMETRIC MANAGEMENT, AT (215) 628-6595, OR JEN.KIRBY@WOLTERSKLUWER.COM. OM OFFERS AN HONORARIUM FOR PUBLISHED SUBMISSIONS.

Optometric Management, Issue: March 2009