Patent & IP Frequently Asked Questions — Austin, Texas
Comprehensive answers to patent and intellectual property questions across every practice area — from provisional applications and utility patent prosecution to PCT international filing strategy, freedom to operate opinions, IP agreements, trade secret protection, trademarks, and more. Written by a USPTO-registered patent attorney with a physics degree from the University of Texas at Austin, seven years of semiconductor manufacturing process engineering experience specializing in laser lithography, and 17 years of USPTO prosecution experience across software and AI, semiconductor and electronics, medical device and biotech, and mechanical technology areas.
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[ General Patent Questions ]
The questions below cover the foundations of US patent law and USPTO practice — the concepts that apply across every technology area and every service category on this page, and that inform the more specific questions that follow in each subsequent section.
Question: What is the difference between a patent, a trade secret, a trademark, and a copyright — and which do I need?
Answer: Each protects something different. A patent protects how an invention works or looks — its function or ornamental appearance. A trade secret protects confidential business information that has value precisely because it is not publicly known. A trademark protects brand identifiers — names, logos, slogans — that tell consumers who made a product or service. A copyright protects original creative expression — software code, written works, visual art, and music. Many innovations benefit from multiple forms of protection simultaneously: a software product might have patent protection on its core technical innovations, copyright protection on the specific code, trademark protection on the product name and logo, and trade secret protection on training data or process parameters. I help clients identify which combination makes sense for their specific situation.
Question: Can I get a patent on an improvement to an existing product?
Answer: Yes — improvements to existing products and processes are among the most commonly patented inventions. You do not need to invent something entirely from scratch. If your improvement is novel and non-obvious over what existed before, it can be patented regardless of whether the underlying product is itself patented. An important practical note: a patent on an improvement does not give you the right to practice the underlying patented product without the base patent owner's permission — and the base patent owner cannot practice your improvement without your permission. These situations often lead to cross-licensing arrangements.
Question: What happens to my patent rights if I talk about my invention at a networking event or pitch competition?
Answer: In the United States, a public disclosure of your invention starts a one-year clock — you have 12 months from that disclosure to file a US patent application or your rights are permanently lost. However, in the US, the first party to file a patent application for an invention is entitled to the patent, so you want to make sure you are the first to file. Also, that one-year grace period does not exist in most foreign countries. A single public disclosure before filing permanently destroys your ability to obtain patent protection in Europe, Japan, South Korea, China, and most other jurisdictions regardless of whether you later file within 12 months. My consistent advice is to file at least a provisional patent application before any public disclosure — pitch competitions, investor presentations, conference talks, product demonstrations, or published papers.
Question: My company's employees invented something on company time. Who owns the patent?
Answer: In most employment situations, inventions made by employees within the scope of their employment — using company resources, company time, or related to the company's business — are owned by the employer, not the individual inventor. However, this rule depends on whether proper IP assignment agreements were executed at the time of hiring. Without a written proprietary information and invention assignment agreement, the ownership question can be genuinely contested. I regularly help companies audit their IP assignment documentation and cure gaps before they surface in investor due diligence or acquisition negotiations.
Question: Can two people patent the same invention independently?
Answer: Under the current US first-to-file system, the first person to file a patent application on an invention gets priority — regardless of who invented it first. If two inventors independently develop the same invention and one files before the other, the first filer gets the patent even if the second inventor's conception date was earlier. This is exactly why filing promptly is so important. The pre-AIA first-to-invent system — which applied to applications filed before March 16, 2013 — is no longer the law. File first.
Question: What is a patent troll and how do I protect my company from one?
Answer: A patent assertion entity — colloquially called a patent troll — is a company that acquires patents with the primary purpose of licensing them aggressively or litigating against operating companies rather than practicing the technology. Protection against patent assertion entities involves both offensive and defensive measures: building your own patent portfolio to provide leverage in licensing negotiations, conducting freedom to operate analysis before product launches to identify potential exposure, and maintaining good prior art documentation that can support invalidity challenges if a weak patent is asserted against you. Inter partes review at the PTAB is currently the most effective tool for challenging the validity of weak patents asserted by trolls.
Question: How do I know if someone is already infringing my patent?
Answer: Identifying potential infringement requires comparing your patent claims — specifically the independent claims — against a suspected competitor's product or process element by element. Every element of at least one of your independent claims must be present in the accused product or process for literal infringement to exist. This analysis requires both legal claim interpretation and technical understanding of what the competitor's product actually does. I conduct infringement analysis for patent holders who suspect their patents are being infringed and provide written opinions assessing the strength of potential infringement positions.
Question: What is a patent marking requirement and do I need to mark my products?
Answer: Patent marking — placing the patent number or "Patent Pending" on a patented product — is not required to maintain your patent rights, but it affects your ability to recover damages for past infringement. Under 35 U.S.C. § 287, you cannot recover damages for infringement that occurred before the infringer received actual notice of the patent unless your products were properly marked. Virtual marking — displaying "Patent" followed by a URL where the patent number is listed — is now an acceptable alternative to physical marking. I advise all patent holder clients on marking requirements and help implement virtual marking programs.
Question: Can I patent something that exists in nature or was discovered rather than invented?
Answer: Naturally occurring phenomena, abstract mathematical relationships, and laws of nature are not patentable — these are judicial exceptions to patent eligibility. However, something that is isolated from nature, purified, or applied in a novel way may be patentable. A naturally occurring DNA sequence as it exists in the genome is not patentable; a novel method of using a gene sequence for a specific diagnostic purpose may be. The medical and biotech patent landscape after Mayo and Myriad Genetics requires careful claim drafting to protect innovations that involve natural phenomena while claiming the specific technical application rather than the natural phenomenon itself.
Question: What is prior art and where does it come from?
Answer: Prior art is everything that was publicly known or available before the effective filing date of your patent application — the benchmark against which your invention's novelty and non-obviousness are measured. Prior art includes earlier US and foreign patents, published patent applications from any country, technical journal articles, conference papers, product manuals, website content, trade show demonstrations, and any other public disclosure. Prior art does not need to be in English or in a patent document — a technical paper published in a German engineering journal is prior art against your US patent application if it was published before your filing date. My prior art searches specifically cover technical literature in the semiconductor, optics, AI, and medical device fields where the most relevant prior art is frequently found outside patent databases.
Question: How does the USPTO decide which examiner reviews my application?
Answer: Applications are classified by technology area and assigned to the appropriate art unit — a group of USPTO examiners who share expertise in that technology. The classification is based on the subject matter of the claims. Semiconductor and electronics applications go to art units in the 2800 and 2900 series; software applications typically go to 2100 or 3600 series; medical device applications to 3700; mechanical applications to 3600 or 3700 depending on the technology. Within the art unit, applications are assigned to individual examiners based on their specific technical background and current workload. Understanding which art unit and examiner type will handle your application informs prosecution strategy — different art units have different examination tendencies and allowance rates.
Question: What is the best way to document my invention before I file?
Answer: Thorough invention documentation serves multiple purposes — it helps me draft the strongest possible patent application, it establishes the technical foundation for future continuation claims, and it creates a record of your inventive activity. I recommend documenting your invention in writing with as much technical detail as possible, including the problem you identified, why existing solutions were inadequate, what you conceived as the solution, how the solution works at a technical level, alternative embodiments and variations you considered, and any test data or experimental results that demonstrate the invention works. Photographs, engineering drawings, code comments, lab notebooks, and dated email communications all contribute to a useful invention record.
Question: Can I file a patent application after my product has already launched?
Answer: In the United States, you have one year from the first public disclosure — including product launch — to file a patent application. If you are within that one-year window, you can still file a US application. However any international patent rights in absolute novelty jurisdictions — Europe, Japan, South Korea, China, and most other countries — are permanently lost once a public disclosure occurs before filing. If you have launched a product without filing, contact me immediately to assess what US protection is still available and what international rights, if any, can still be preserved.
Question: What is a patent claim's preamble and does it matter?
Answer: The preamble of a patent claim is the introductory clause — typically the phrase before "comprising" or "consisting of" — that describes the general nature of the claimed invention. The preamble's legal significance has been extensively litigated in the Federal Circuit. Generally, if the preamble gives life, meaning, and vitality to the claim, it is a limiting element that constrains claim scope. If the preamble merely states the intended use or purpose without adding substance to the claim, courts may find it non-limiting. This distinction matters enormously in infringement analysis and in prosecution — how the preamble is drafted affects the claim's scope and how it interacts with prior art.
Question: Can I enforce a patent while it is still pending and not yet granted?
Answer: Not directly — you cannot sue for patent infringement until the patent is granted. However, you may be able to recover damages for infringement that occurs during the period after the application publishes — typically 18 months after filing — if the infringer had actual notice of the published application and the issued patent claims are substantially identical to the published claims. This provisional rights theory under 35 U.S.C. § 154(d) provides a basis for backdating damages to the publication date in some circumstances. I advise clients on provisional rights strategy as part of portfolio prosecution planning.
Question: What happens if my patent application is abandoned?
Answer: A patent application is abandoned when the applicant fails to respond to an Office Action within the response deadline, fails to pay required fees, or expressly abandons the application. An abandoned application can sometimes be revived — through a petition for revival accompanied by a showing of unintentional delay — but revival is not guaranteed and involves additional costs and delays. Revival must typically be petitioned within a limited time after abandonment. Strategically, an abandoned application still constitutes prior art as of its filing date once it publishes, which can affect subsequent patent filings in the same technology area. Contact me immediately if you have received notice of abandonment or if you are concerned about missing a response deadline.
Question: What is the difference between patent prosecution and patent litigation?
Answer: Patent prosecution is the administrative process of obtaining a patent from the USPTO — filing applications, responding to Office Actions, arguing for allowance of claims, and managing the portfolio through maintenance. Patent litigation is the judicial process of enforcing patents in federal court or challenging patents at the PTAB. Patent prosecution attorneys — like me — are registered to practice before the USPTO and handle the prosecution side. Patent litigators are trial attorneys who handle infringement lawsuits, typically in federal district court. Many IP matters involve both — I handle prosecution and provide technical support for litigation when my engineering background adds value to the technical analysis.
Question: How does the patent system treat software implemented on multiple devices like cloud platforms?
Answer: Distributed computing systems and cloud-based platforms create specific claim drafting challenges because patent infringement typically requires that a single party performs every element of the claimed method or uses every element of the claimed system. When a claimed method is performed across multiple devices — some operated by the service provider, some by the user — establishing direct infringement can require showing that one party controls and benefits from the entire claimed system even when the components are distributed. I draft cloud and distributed computing patent claims with this single-entity requirement specifically in mind, structuring claims to maximize enforceability against both the platform provider and, where appropriate, the end user.
Question: What is the America Invents Act and how did it change US patent law?
Answer: The Leahy-Smith America Invents Act, enacted in 2011 with most provisions effective March 16, 2013, made the most significant changes to US patent law in decades. The most consequential change was the shift from a first-to-invent system to a first-to-file system — eliminating the ability to antedate prior art by proving an earlier date of invention and making prompt filing critical. The AIA also created the inter partes review proceeding at the PTAB as a faster and cheaper alternative to district court invalidity challenges, established derivation proceedings to replace interference proceedings, and modified the prior art provisions of Section 102 to create the current one-year grace period for the inventor's own disclosures.
Question: Can I patent a method of doing business?
Answer: Business method patents occupy complex territory in US patent law. Pure abstract business methods — like the concept of hedging financial risk or organizing information using mathematical relationships — are not patentable under Alice. But specific technical implementations of business methods that produce concrete technical improvements can be patented. A fintech patent that claims a specific algorithmic approach to fraud detection implemented through a defined technical architecture is potentially patentable. A patent that claims the concept of conducting auctions over the internet without specific technical innovation is not. The distinction requires careful claim drafting — describing the technical implementation rather than the business concept.
Question: What is patent prosecution history estoppel and why should inventors care about it?
Answer: Prosecution history estoppel is a doctrine that limits a patent holder's ability to assert the doctrine of equivalents — claiming infringement by a product that does not literally infringe the claim but performs substantially the same function in substantially the same way to achieve substantially the same result. When an applicant narrows a claim during prosecution to overcome a prior art rejection, those surrendered claim elements cannot be recaptured through the doctrine of equivalents. This means that every claim amendment made during prosecution has permanent consequences for the patent's eventual scope. I approach every Office Action response with prosecution history estoppel specifically in mind, structuring amendments to narrow only what is necessary while preserving maximum scope.
[ Software & AI Patent Questions ]
Software and AI patent prosecution lives at the intersection of rapidly evolving USPTO examination guidance and genuine technical understanding of computing architecture — my Unix certification and semiconductor engineering background inform how I construct the specific technical improvement arguments that survive Alice/Mayo scrutiny before the software and AI art unit examiners who are themselves technically trained. For comprehensive information see the [Software & AI Patents page →].
[ Semiconductor & Electronics Questions ]
Seven years as a manufacturing process engineer specializing in laser lithography — the photolithographic process at the core of semiconductor chip fabrication — gives me the technical foundation to engage USPTO semiconductor examiners as a peer rather than as a legal practitioner interpreting a technical briefing. For comprehensive information see the [Semiconductor & Electronics Patents page →].
[ Medical Device & Biotech Patent Questions ]
Medical device patent prosecution requires coordinating IP filing strategy with FDA regulatory timelines — a public disclosure before a patent application is filed can permanently destroy international patent rights regardless of subsequent US filings — and my physics degree and optics background inform how I engage with the diagnostic imaging, biosensing, and electromechanical device innovations that Austin's health technology community produces. For comprehensive information see the [Medical Device & Biotech Patents page →].
[ Mechanical Patent Questions ]
My approach to mechanical patent prosecution starts from applied physics — the classical mechanics, thermodynamics, and materials science I studied at the University of Texas at Austin — which means I engage with mechanical inventions at the level of the underlying physical principles rather than the surface description of what the device does, producing claims that capture the inventive concept rather than just the specific embodiment the inventor first built. For comprehensive information see the [Mechanical & General Patents page →].
[ PCT International Patent Questions ]
The PCT process provides 30 months to assess which international markets genuinely justify national phase investment — but the strategic decisions made during that window, including how to interpret the international search report and how to coordinate US and foreign prosecution for coherent claim coverage, determine the quality of the international portfolio that results. For comprehensive information see the [PCT International Patents page →].
[ Provisional Patent Application Questions ]
A provisional is only as good as what it discloses — a thin hastily-drafted provisional that fails to capture your invention's full technical scope will not support the broad claims you need in the non-provisional that follows, which is why I treat provisional drafting with the same technical rigor I apply to full utility applications. For comprehensive information see the [Provisional Patent Applications page →].
[ Utility Patent Questions ]
The value of a utility patent lives entirely in its claims — and drafting claims that capture the genuine inventive contribution at the broadest scope the prior art allows requires both knowing the prior art landscape in detail and understanding your technology at an engineering level, which is why I conduct a thorough prior art search before drafting claims for every utility patent client. For comprehensive information see the [Utility Patent Applications page →].
[ Design Patent Questions ]
Design patents are defined almost entirely by their drawings — the specific views shown in solid versus broken lines determine what is protected — and the strategic use of broken lines to show unclaimed context while protecting the distinctive ornamental elements is one of the most consequential decisions in design patent drafting. For comprehensive information see the [Design Patent Applications page →].
[ Patent Search Questions ]
A professional prior art search in technically complex fields — semiconductor, software, optics, and medical device — requires genuine engineering expertise to recognize relevant prior art when it is found, because the most important prior art for these inventions is frequently buried in IEEE publications, conference proceedings, and physics literature that keyword-based patent database searches miss entirely. For comprehensive information see the [Patent Search & Patentability Opinion page →].
[ Patent Prosecution Questions ]
Seventeen years of USPTO prosecution across semiconductor, software, medical device, and mechanical art units has taught me things about specific examiner tendencies, effective examiner interview strategies, and the prosecution arguments that consistently advance prosecution in each technology area that are simply not available from any textbook or continuing education program. For comprehensive information see the [Patent Prosecution & USPTO Practice page →].
[ Office Action Questions ]
The single most important strategic consideration in drafting Office Action responses is preserving the maximum possible claim scope while overcoming the examiner's rejections — every claim amendment made during prosecution is permanently recorded in the file wrapper and can be used against you in future litigation through prosecution history estoppel. For comprehensive information see the [Responding to Office Actions page →].
[ Continuation Application Questions ]
I plan continuation strategy from the very first application — drafting original specifications comprehensive enough to support the future claims you will want to pursue as your product evolves and your competitive landscape becomes clearer — because a thin original specification cannot be supplemented later without losing the benefit of the original priority date for the new subject matter. For comprehensive information see the [Continuation Patent Applications page →].
[ Continuation-In-Part Questions ]
The split priority date structure in CIP applications — where old subject matter claims the parent's filing date and new subject matter claims the CIP's later date — requires careful technical analysis of what was and was not disclosed in the parent application, an analysis that benefits significantly from an attorney who understands the engineering substance of both filings rather than just the legal claim comparison. For comprehensive information see the [Continuation-in-Part Patent Applications page →].
[ Patent Portfolio Management Questions ]
A patent portfolio is a strategic asset that requires ongoing management decisions — what to file, what to maintain, what to abandon, and how to build continuation coverage that keeps pace with both your technology evolution and your competitive landscape — not a collection of individual filings that accumulate without strategic direction. For comprehensive information see the [Patent Portfolio Management page →].
[ Freedom to Operate Opinion Questions ]
The accuracy of an FTO opinion in technically complex fields depends directly on the technical depth of the attorney conducting it — misreading a semiconductor circuit patent claim or misinterpreting an optical system claim because of inadequate engineering background produces false conclusions that either unnecessarily constrain your product development or miss real infringement risks. For comprehensive information see the [Freedom to Operate Opinions page →].
[ Patent Validity & Invalidity Questions ]
Finding the most powerful invalidating prior art for technically complex patents requires both comprehensive searching capability and genuine technical understanding of the claimed invention — the most significant invalidity references for semiconductor, optics, and medical device patents are often in technical literature that requires engineering expertise to recognize and evaluate accurately. For comprehensive information see the [Patent Validity & Invalidity Opinions page →].
[ IP Due Diligence Questions ]
IP due diligence for technology companies where the patent portfolio is the primary value driver requires both legal claim analysis and genuine technical assessment of what the patents actually protect — a technically accurate evaluation of core technology patents provides a dramatically more reliable picture of IP value than purely legal review of the same documents. For comprehensive information see the [IP Due Diligence page →].
[ Patent Valuation Questions ]
Patent valuation requires assessing not just what a patent says but what it actually covers commercially — whether the claims protect the market-relevant implementation of the technology or only a specific embodiment that competitors can easily design around — a distinction that requires both legal claim construction analysis and genuine technical understanding of the commercial landscape. For comprehensive information see the [Patent Valuation page →].
[ Non-Infringement Opinion Questions ]
The technical accuracy of a non-infringement opinion depends on accurate claim interpretation — and in semiconductor, optics, software, and medical device fields, claim terms have specific technical meanings that only someone with genuine engineering expertise in the relevant field can interpret with the precision that a reliable non-infringement conclusion requires. For comprehensive information see the [Non-Infringement Opinions page →].
[ Patent Licensing Agreement Questions ]
The commercial value of a patent license depends on the precision of its terms — the scope of the grant, the royalty structure, the improvements provisions, and the enforcement rights — and those terms need to reflect both the legal framework and genuine technical understanding of what the licensed technology is actually worth in the relevant market. For comprehensive information see the [Patent Licensing Agreements page →].
[ IP Assignment Agreement Questions ]
Gaps in the IP assignment chain — from founders, employees, and contractors to the company entity — are one of the most common and most damaging problems discovered during investor due diligence and acquisitions, and they are almost entirely preventable by ensuring proper IP assignment documentation is executed at the time each contributor begins work. For comprehensive information see the [IP Assignment Agreements page →].
[ Non-Disclosure Agreement Questions ]
A disclosure made without a properly executed NDA before filing a patent application may permanently eliminate international patent rights in absolute novelty jurisdictions — including Europe, Japan, South Korea, and China — regardless of whether a US patent application is subsequently filed within the one-year grace period, which is why I advise filing at least a provisional application before any significant technical disclosure. For comprehensive information see the [Non-Disclosure Agreements page →].
[ Joint Development Agreement Questions ]
Under US patent law, an invention jointly developed by employees of two collaborating organizations is jointly owned by both — meaning each owner can independently practice and license the invention without the other's consent — which is almost never the commercial arrangement either party intended and is entirely avoidable with a properly drafted joint development agreement executed before collaboration begins. For comprehensive information see the [Joint Development Agreements page →].
[ IP Agreements & Contracts Questions ]
Every significant commercial relationship a technology company enters has an intellectual property dimension — and most IP problems surface not in patent prosecution but in the agreements that govern how technology is licensed, developed, shared, and transferred. I draft and review the full range of IP-related commercial agreements for Austin technology companies at every stage, from the first vendor contract a startup signs to the complex technology transfer agreements that accompany major transactions. For comprehensive information see the [IP Agreements & Contracts page →].
[ Trade Secret Protection Questions ]
The choice between patent protection and trade secret protection is a genuine strategic decision — not a default — that depends on whether your innovation is reverse-engineerable from a finished product, whether its commercial value is likely to outlast a 20-year patent term, and whether the public disclosure patent protection requires would benefit competitors more than the exclusivity it provides would benefit you. For comprehensive information see the [Trade Secret Protection page →].
[ Trademark Questions ]
Federal trademark registration provides rights that a patent cannot — indefinite protection for brand identifiers that lasts as long as the mark is used in commerce and renewals are maintained — making trademark registration a complementary and separately valuable component of comprehensive IP protection alongside your patent portfolio. For comprehensive information see the [Trademark Services page →].
[ Copyright Questions ]
Copyright registration is required before filing a copyright infringement lawsuit in federal court and enables recovery of statutory damages up to $150,000 per work for willful infringement — making registration one of the most cost-effective IP investments available to Austin software developers, technology companies, and creative professionals whose work has commercial value. For comprehensive information see the [Copyright Services page →].
[ IP-Focused Business Formation Questions ]
The entity structure you choose at company formation determines who legally owns your intellectual property — and proper IP assignment from all founders to the company entity, correctly documented from day one, prevents the ownership disputes and due diligence problems that routinely derail funding rounds and acquisitions for companies that got this wrong at the beginning. For comprehensive information see the [IP-Focused Business Formation page →].
[ Startup IP Strategy Questions ]
The IP decisions made in a company's first two years have compounding effects on portfolio quality and defensive positioning that persist for the entire lifecycle of the company — and making those decisions with genuine technical and strategic guidance rather than filing whatever seems most obvious at the time produces measurably better IP outcomes at every subsequent stage. For comprehensive information see the [Startup IP Strategy Consultation page →].
[ University & Research IP Questions ]
As a UT Austin physics graduate who has worked in the semiconductor manufacturing environment that produces many of UT's most significant technical innovations, I bring both legal knowledge of the university IP framework and genuine technical understanding of the research disciplines — semiconductor physics, optics, computational systems, biomedical engineering — where UT's most patentable discoveries originate. For comprehensive information see the [University & Research Institution IP page →].
[ Of Counsel Services Questions ]
For Texas law firms whose clients have patent needs in technically sophisticated fields — semiconductor, software, AI, medical device, and optics — my combination of 17 years of prosecution experience, a physics degree from UT Austin, and seven years of semiconductor manufacturing engineering provides the technical credibility that these technology areas require and that generalist IP counsel without genuine engineering background cannot offer. For comprehensive information see the [Of Counsel Services page →].
[ Foreign Applicant Filing Questions ]
Foreign inventors and international law firms seeking US patent protection need a USPTO-registered attorney who engages with technically complex semiconductor, software, optical, and medical device inventions at an engineering peer level — not just a legal practitioner who processes filings — which is precisely what my combination of physics education, laser lithography engineering experience, and 17 years of prosecution provides. For comprehensive information see the [USPTO Filing for Foreign Applicants page →].
[ Fractional IP Counsel Questions ]
The difference between fractional IP counsel and transactional outside patent counsel is continuity of strategic context — a fractional relationship means every prosecution decision, continuation filing, maintenance fee choice, and licensing conversation is informed by the same integrated understanding of your technology and business that an experienced in-house attorney would bring, without the cost of a full-time hire. For comprehensive information see the [Fractional IP Counsel page →].
[ International Patent Strategy Questions ]
Effective international patent strategy is not reflexive broad filing — it is deliberate market-by-market analysis matching your filing decisions to your actual competitive footprint, your technology's commercial lifecycle, and your IP budget across a multi-year prosecution timeline that determines which markets genuinely justify the investment. For comprehensive information see the [International Patent Strategy page →].
[ Inter Partes Review Support Questions ]
IPR proceedings are won or lost on the quality of the technical prior art analysis — finding the most powerful invalidating references in the technical literature of semiconductor, optics, software, and medical device fields requires genuine engineering expertise to recognize relevant art that patent database keyword searches consistently miss. For comprehensive information see the [Inter Partes Review Support page →].
[ Home Page Questions ]
Questions about getting started — cost, timeline, whether you need a prototype first, and why a boutique engineering-background attorney might fit your invention better than a large firm — are answered on the homepage. For comprehensive information see the [Home page →]
[ About Page Questions ]
Questions about my own background and credentials — my physics degree, my semiconductor engineering career, and why local Austin knowledge matters for patent strategy — are answered on the About page, along with Austin- and Texas-specific questions covering everything from the Western District of Texas's role in patent litigation to UT Austin's research ecosystem. For comprehensive information see the [About page →].
[ Patent Practice Areas Questions ]
Questions about how to work with this firm — what types of patents are handled, whether you need to pick the "right" practice area page yourself or just book a consultation, how billing works across different technology areas, and whether one attorney can realistically cover all of your company's IP needs — are answered on the Practice Areas page. For comprehensive information see the [Practice Areas page →]
[ Contact Page Questions ]
Questions about scheduling and what to expect from your first consultation — what to bring, how confidentiality works before you've signed anything, and how quickly I can respond to an urgent deadline or a cease-and-desist letter — are answered on the Contact page. For comprehensive information see the [Contact page →].
[ Patent Blog Questions ]
Questions about the blog itself — what topics it covers, how often new articles are published, whether I write the content personally, and how to find articles relevant to your specific technology area — are answered on the Blog page. For comprehensive information see the [Blog Page →]
[ Patent Resources Questions ]
Questions about using patent research tools — Google Patents, the USPTO Patent Center, Espacenet, and how to evaluate a patent attorney's technical qualifications before you hire one — are answered on the Resources page. For comprehensive information see the [Resources page →].
[ Patent & IP Glossary Questions ]
Questions about core patent vocabulary — the difference between a patent, trademark, copyright, and trade secret, what "patent pending" actually protects, how a claim differs from a specification, and doctrines like prosecution history estoppel and written description — are answered on the Glossary page. For comprehensive information see the [Glossary Page →]
[ Austin & Texas Questions ]
Austin's technology ecosystem — from the semiconductor companies along the 183 corridor and Samsung Austin Semiconductor in north Austin to the UT Austin research spinout community and Capital Factory's startup network — creates a specific patent landscape and competitive IP environment that shapes strategy for every company building technology in Central Texas.
[ Schedule a Free Consultation ]
General answers are a useful starting point — but patent law is intensely fact-specific, and the answer to almost every patent question changes when you apply it to a specific invention, a specific technology, a specific competitive landscape, and a specific business situation.
If something on this page raised a question about your own IP situation, a free 30-minute phone consultation is the right next step. I work directly with inventors, funded startups, and corporate IP teams across Austin and Central Texas — no paralegals, no junior associates, no delegation. Every client works with me directly, from the first conversation through prosecution, portfolio strategy, and beyond.
My physics degree from UT Austin, hands-on semiconductor engineering experience in laser lithography, optics background, Unix certification, and 17 years of USPTO prosecution experience across every major technology area give me the technical and legal depth to engage with your specific situation rather than providing the same generic guidance available from any generalist IP attorney.
Whether you have a single invention you want to protect, a growing portfolio that needs strategic oversight, or a specific IP problem you need solved, the consultation is free, confidential under attorney-client privilege, and genuinely useful — not a sales call.
Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form. Consultations are available Monday through Friday, 1:00pm to 4:00pm Central Time.
No obligation.
Phone: 512-293-0710
Email: sconnolly@austin-patent-attorney.com
Location: Austin, Texas
Serving Austin, Round Rock, Cedar Park, Georgetown, and all of Central Texas.
USPTO matters are federal — I work with clients throughout Texas and nationwide.