Patent Of Counsel Services — Austin, Texas
A USPTO-registered patent attorney with 17 years of prosecution experience and a rare engineering background — laser lithography, optics, physics from UT Austin, Unix certification — available for Of Counsel arrangements with Texas law firms that need technically sophisticated patent counsel for clients in complex technology fields.
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Why Law Firms Engage Patent Of Counsel
General practice firms, business law boutiques, litigation firms, and even smaller IP practices regularly encounter client situations that fall outside their core patent prosecution competency. A corporate client negotiating an acquisition discovers the target has a complex semiconductor patent portfolio that needs technical assessment. A litigation client receives an Office Action on a pending application after their original prosecution counsel retired. A venture-backed startup client needs utility patent applications drafted in machine learning and embedded systems — technology areas requiring genuine engineering depth.
Rather than referring those clients away entirely and risking the relationship, an Of Counsel arrangement with an experienced USPTO-registered patent attorney allows your firm to serve those patent needs while maintaining the client relationship and the revenue associated with it. I work with Texas law firms on exactly these situations — providing technically sophisticated patent counsel that your firm's clients receive under your firm's relationship while I handle the substantive technical and prosecution work.
Of Counsel arrangements are common in patent practice precisely because patent prosecution requires a unique combination of technical education, USPTO registration, and prosecution experience that not every firm maintains in-house. The USPTO requires that patent applicants be represented by a registered practitioner — which means firms without registered patent counsel must either refer patent work out or engage Of Counsel who is registered. I am USPTO-registered and available for Of Counsel arrangements with Texas firms that need a technically credible patent practitioner for their clients.
My Technical Background — Why It Matters for Your Clients
The value of Of Counsel patent services depends almost entirely on the technical depth the Of Counsel attorney brings to each engagement. Any licensed practitioner can handle routine procedural matters. What firms with technically sophisticated clients actually need is Of Counsel who can engage with the technology at an engineering level — understanding the prior art landscape, drafting claims that accurately capture the inventive concept, and responding to Office Actions with technically credible arguments that USPTO examiners trained in the relevant field respond to effectively.
My technical background is unusually well-suited to the technology areas that Austin and Texas law firms' clients most frequently need patent counsel for. I hold a Bachelor of Science in Physics from the University of Texas at Austin, where my coursework included quantum mechanics, classical dynamics, and tensor calculus. Before attending law school I spent over seven years as a manufacturing process engineer specializing in laser lithography — the photolithographic process at the core of semiconductor chip fabrication. I also have hands-on experience in optics and photonics, and I hold a Unix certification reflecting genuine computing and systems background.
This combination gives me genuine technical depth across semiconductor and electronics technology, software and AI systems, optical and photonic innovations, medical devices incorporating electronic and sensor components, and mechanical engineering grounded in applied physics. For firms whose clients operate in these technology areas, my engineering background provides a level of technical credibility in patent prosecution that produces measurably better outcomes than representation by counsel without genuine industry experience. When I engage a USPTO examiner with a technical background in semiconductor physics or software architecture, I am engaging them as a peer — which affects how examiner interviews proceed, how Office Action arguments are received, and ultimately how broad the claims that issue from prosecution are.
Structure and Mechanics of Of Counsel Arrangements
Of Counsel arrangements between patent practitioners and law firms can be structured in multiple ways depending on the firm's needs, client relationships, and professional responsibility considerations. The most common structures I work with include transparent Of Counsel arrangements where I appear as Of Counsel to the firm on specific patent matters, behind-the-scenes arrangements where I provide technical analysis and drafting support to the firm's attorneys who then advise their clients directly, matter-specific engagements for individual prosecution or opinion matters, and ongoing arrangements covering all of a firm's patent work in specific technology areas.
Compensation structures are similarly flexible. Hourly billing, flat fees per matter type (per application drafted, per Office Action response, per opinion letter), revenue sharing arrangements, and hybrid structures combining retainer elements with per-matter billing are all structures I am open to discussing. The goal is a commercially reasonable arrangement that works for the firm's economics and provides fair compensation for the technical expertise I bring to each matter.
On the professional responsibility side, Of Counsel arrangements are governed by the Texas Disciplinary Rules of Professional Conduct and applicable bar guidance. I conduct conflict checks before accepting any matter, work with the referring firm to ensure appropriate disclosures are made to clients where required, and maintain full professional liability insurance with coverage amounts available upon request. I take professional responsibility obligations seriously and approach every Of Counsel arrangement with the expectation that both our reputations are on the line in how we handle our mutual clients' matters.
Technology Areas Where Of Counsel Adds the Most Value
Not every patent matter requires specialized technical Of Counsel. Straightforward mechanical applications in well-established technology areas, routine maintenance fee management, and procedural USPTO correspondence are matters many firms can handle competently with general IP counsel. The situations where technically specialized Of Counsel provides the greatest incremental value are those involving technically complex inventions in fields where the prior art landscape is dense and USPTO examiners are themselves technically sophisticated.
Semiconductor and electronics patent prosecution is perhaps the area where my Of Counsel value is most concentrated. Examiners in the semiconductor and electrical art units hold engineering degrees in electrical engineering, physics, and computer science and are trained to scrutinize claims and prior art at a technical level that purely legal arguments do not address effectively. My seven years of semiconductor manufacturing process engineering experience, including laser lithography, gives me the technical standing to engage those examiners as a technical peer — which produces different and consistently better prosecution outcomes than representation by counsel without genuine semiconductor engineering background.
Software and AI patent prosecution under the Alice/Mayo framework similarly benefits from Of Counsel with genuine computing background. My Unix certification and semiconductor engineering experience with hardware-software integration inform how I construct the technical improvement arguments that survive Section 101 scrutiny in software and AI cases — arguments that require demonstrating specific technical improvements to computer functionality rather than abstract idea implementation. For medical device patents incorporating electronic, photonic, or sensor components, my optics background and cross-disciplinary physics training allow me to protect the full technical scope of complex multi-disciplinary devices comprehensively.
Opinion Work and Portfolio Analysis for Firm Clients
Beyond application drafting and prosecution, Of Counsel patent engagements frequently involve opinion work that requires both legal judgment and technical analysis. Freedom to operate opinions, patentability opinions, validity and invalidity opinions, and non-infringement opinions all require genuine technical understanding of the relevant technology to be accurate and reliable — particularly for clients in semiconductor, software, optics, and medical device industries.
A freedom to operate opinion in the semiconductor space that misinterprets claim scope because the opinion attorney does not understand the underlying circuit architecture or fabrication process is not just unhelpful — it creates risk for both the client who relies on it and the firm that delivered it. My engineering background eliminates that class of technical interpretation error for the technology areas where I practice, producing opinions that your clients can actually rely on for business decisions involving significant capital expenditure and litigation risk.
Patent portfolio analysis for corporate transactions is another area where Of Counsel technical depth matters significantly. When a firm's M&A client is acquiring a company with a substantial semiconductor or software patent portfolio, the quality of IP due diligence depends on the reviewing attorney's ability to assess claim scope, evaluate prosecution history for estoppel risks, and identify prior art vulnerability at a technical level. I regularly provide portfolio analysis services to firms supporting their clients through acquisitions, investments, and licensing transactions — delivering technically grounded assessments rather than form-based reviews of portfolio composition.
[ Of Counsel FAQs — Austin, Texas ]
Question: What types of patent matters are you available for on an Of Counsel basis?
Answer: I am available for the full range of patent prosecution and counseling matters including patent application drafting and prosecution for firm clients in technically complex fields, Office Action responses requiring technical expertise beyond the firm's current capacity, freedom to operate opinions, patentability analyses, patent portfolio strategy, licensing agreement drafting and negotiation, and IP due diligence for transactions. My strongest areas are technically complex inventions in semiconductor, software, AI, medical device, and optical technology fields where my engineering background adds significant value.
Question: How do you handle professional responsibility and conflicts in Of Counsel arrangements?
Answer: Before accepting any Of Counsel matter I conduct a conflict check against my existing client list. I work with the referring firm to ensure appropriate conflict checking is completed on both sides and that any required disclosures are made to clients consistent with the Texas Disciplinary Rules of Professional Conduct. I carry professional liability insurance and can provide evidence of coverage upon request. Professional responsibility compliance is a priority in every Of Counsel arrangement I undertake.
Question: Can you work directly with firm clients or only behind the scenes?
Answer: Both arrangements work depending on the firm's preference and the specific matter. In some Of Counsel arrangements I work directly with the firm's client as disclosed patent counsel — appearing as attorney of record at the USPTO and communicating directly with the client on technical and legal matters. In others I work entirely behind the scenes, providing technical and legal analysis to the referring firm's attorneys who then advise their clients. I am flexible on the structure and work with each firm to design the arrangement that best serves their clients and practice management needs.
Question: What is the standard of care for of counsel patent prosecution and how do you ensure quality consistent with the referring firm's expectations?
Answer: Of Counsel patent prosecution quality must meet the same standard of care applicable to any patent attorney-client relationship — the standard of care expected of a reasonably competent patent attorney specializing in the relevant technology area and prosecution context. My approach to maintaining consistent quality across of counsel matters includes: treating each Of Counsel matter with the same priority and attention I give direct client matters regardless of the referral source; maintaining clear communication with the referring firm about prosecution status, strategy recommendations, and significant developments; providing draft work product for referring firm review before any USPTO submissions when the firm prefers that involvement; and flagging any issues that might require strategic decisions by the referring firm or client rather than making those decisions unilaterally. The referring firm relies on me to provide prosecution quality that reflects well on the firm's overall client service — I take that responsibility as seriously as my own direct client relationships.
Question: What is a technology-specific Of Counsel engagement structure and how does it differ from general patent Of Counsel?
Answer: A technology-specific Of Counsel engagement focuses my particular technical expertise on matters specifically requiring semiconductor, software, AI, optics, or medical device engineering depth — rather than serving as a general patent practitioner for all patent matters the referring firm encounters. This targeted structure works well for Texas business law firms, litigation firms, and general practice firms whose technology company clients occasionally need specialized patent prosecution in technically demanding areas. The structure is clear in its scope: the referring firm handles client relationship management, billing, general business law matters, and patent matters outside my technical specialties — while I specifically handle prosecution in the technical areas where my engineering background provides distinctive value. This division of responsibility is commercially efficient for the referring firm — they maintain the client relationship and full-service capability without the overhead of an in-house patent specialist — and produces better results for the client in technically demanding prosecution matters than a general practitioner could achieve.
Question: What is the process for transitioning an ongoing patent prosecution matter to the Law Office of Sean Christian Connolly as Of Counsel?
Answer: Transitioning an ongoing prosecution matter — where another attorney or firm has been handling prosecution and the referring firm wants to bring me in for continued prosecution — requires specific procedural steps alongside the substantive technical assessment. Procedurally, a new power of attorney form must be filed with the USPTO designating me as the registered practitioner with authority to act in the application — which I prepare as a standard first step in any prosecution takeover. Substantively, I conduct a thorough review of the complete prosecution history — all Office Actions, all responses, all examiner interview records, and any related application prosecution histories — before making any prosecution decisions. This history review is essential because the prior prosecution choices — amendments made, arguments advanced, and positions taken — create prosecution history estoppel that constrains the options available going forward. I provide the referring firm with a candid assessment of the prosecution history's implications for the remaining prosecution strategy before committing to specific approaches.
Question: What types of technical analysis can the Law Office of Sean Christian Connolly provide to support a referring firm's IP litigation?
Answer: Litigation support from a patent prosecution practitioner is most valuable in three specific contexts. First, claim construction analysis — assessing how disputed patent claim terms should be construed under the Phillips standard based on the specification and prosecution history, with technical expertise informing the proper understanding of technical claim terms as a person of ordinary skill in the art would understand them. Second, technical prior art analysis for invalidity — searching for and evaluating prior art that may invalidate asserted patents, with particular strength in semiconductor, optics, software, and medical device technical literature where my engineering background directly improves prior art identification and relevance assessment. Third, infringement technical analysis — evaluating whether accused products or processes technically satisfy specific claim elements, with the engineering background informing how the technical reality of the accused product maps to the legal claim language. I work as Of Counsel to litigation firms as a technical specialist rather than a litigation attorney — supporting trial counsel's legal strategy with specific technical analysis in areas where my background is directly relevant.
Question: What is the conflict check process for of counsel patent matters and how quickly can engagements begin?
Answer: Before accepting any Of Counsel matter I run a conflict check against my complete current and recent client list — assessing both direct conflicts (representing a party adverse to the referring firm's client in the same matter) and positional conflicts (taking positions adverse to prior clients' established legal interests in the same subject matter area). For straightforward of counsel patent prosecution matters where the conflict check reveals no issues, I can typically begin work within one to two business days of the referring firm's engagement — receiving the application file, completing my preliminary review, and confirming the scope and terms of the engagement. For matters with complex conflict check results — where the client's competitors include other companies I have worked with — I discuss the specific conflict analysis with the referring firm before proceeding, and we assess together whether the conflict is waivable with informed consent from all affected clients. Urgent matters — applications with imminent Office Action response deadlines — receive expedited conflict checking and onboarding to ensure that deadline protection is the first priority.
Answer: When taking over prosecution from another attorney I occasionally identify prosecution decisions in the prior history that appear to have been strategically suboptimal — claim amendments that surrendered more scope than necessary, arguments that may have created unhelpful prosecution history, or opportunities that were not pursued. My obligation in these situations is to the current client — providing the best possible prosecution going forward based on the prosecution record as it exists, even if prior decisions were less than optimal. If I identify an issue that rises to the level of possible malpractice — where the prior prosecution decisions may have irreparably harmed the client's patent rights in ways that could support a professional negligence claim — I discuss the situation candidly with the referring firm, which must then assess its obligations to the client. I do not make malpractice determinations unilaterally or communicate directly with the client about prior prosecution quality without the referring firm's involvement — these are sensitive professional responsibility matters that require coordinated handling.
Question: What is an Of Counsel attorney's obligation when they identify a potential malpractice issue in prior prosecution by another attorney?
Answer: Of Counsel billing arrangements vary based on the referring firm's preferred structure and the specific nature of the engagement. Common arrangements include: direct billing where I invoice the referring firm at agreed rates and the firm bills the client at its standard rates with my fees as a disbursement; pass-through billing where I bill the client directly at agreed rates with the referring firm's oversight; and flat fee arrangements for specific defined deliverables like Office Action responses or patent application drafts at agreed per-matter fees that allow the referring firm to provide its client with cost certainty. USPTO government fees — filing fees, examination fees, and maintenance fees — are always itemized separately from attorney fees regardless of the billing structure. I am flexible on billing structure based on what works best for each referring firm's client relationship and billing practices — the key requirement is that the arrangement be disclosed to the client in a manner consistent with the applicable professional responsibility rules governing fee-sharing and billing transparency.
Question: What is the billing and fee arrangement structure for of counsel patent prosecution and how are disbursements handled?
Question: How do you maintain client confidentiality when working as Of Counsel to a firm?
Answer: Client confidentiality in Of Counsel arrangements is governed by the same Rules of Professional Conduct that govern all attorney-client relationships. Information I receive in connection with an of counsel engagement is protected by attorney-client privilege to the same extent as information received directly by the referring firm's attorneys. I do not disclose of counsel client information to any third party without client consent, I maintain secure information handling practices for all client materials, and I do not use of counsel client information for any purpose other than providing the requested legal services. The privilege protection for Of Counsel work depends on the specific structure of the engagement — whether I am appearing as disclosed of counsel to the firm or working as a behind-the-scenes consultant — which I discuss with referring firms before beginning any engagement.
Question: How do you handle conflicts of interest in Of Counsel patent work?
Answer: Before accepting any Of Counsel matter I conduct a conflict check against my complete current client list. If a conflict exists, I disclose it to the referring firm before proceeding. If the conflict is non-waivable — for example, if I currently represent a party directly adverse to the firm's client in the same matter — I cannot accept the engagement. If the conflict is potentially waivable with appropriate informed consent from all affected clients under Texas Rule 1.06, I discuss the situation transparently with all affected parties. Most conflicts in Of Counsel patent matters are manageable because patent prosecution is not typically directly adverse in the way that litigation conflicts are — but careful conflict checking is essential, and I take it seriously in every engagement. For ongoing Of Counsel relationships where I regularly receive new matter referrals, I implement a systematic new matter intake process that includes conflict checking before beginning work on each new matter.
Question: Can you appear as attorney of record at the USPTO in Of Counsel matters?
Answer: Yes — as a USPTO-registered patent attorney I can appear as attorney of record on patent applications filed in connection with Of Counsel matters, either under my own name as Of Counsel to the referring firm or, in appropriate circumstances, under the referring firm's name as authorized by the USPTO's power of attorney rules. The specific approach depends on the referring firm's preference, the client's expectations, and the professional responsibility considerations applicable to the specific engagement structure. In many Of Counsel arrangements, appearing under my own name as Of Counsel to the firm provides greater transparency and is administratively simpler. In arrangements where the referring firm prefers that all USPTO correspondence run through them, I provide technical and drafting support while the firm's authorized representative is the attorney of record.
Question: What technology areas are you best qualified to handle in Of Counsel patent work?
Answer: My strongest Of Counsel value is in technology areas that require genuine engineering depth — specifically semiconductor and electronics, software and AI systems, optical and photonic technologies, and medical device and biotech innovations incorporating electronic, optical, or mechanical components. My seven years of semiconductor manufacturing process engineering experience in laser lithography, my physics degree from UT Austin that included quantum mechanics and tensor calculus, my optics experience, and my Unix certification provide technical credentials that are directly relevant and relatively rare among patent practitioners. For mechanical and general engineering patent matters I bring applied physics depth. For technology areas outside these core competencies — pure organic chemistry, formulation pharmaceuticals, or specialized biological sciences — I would discuss with the referring firm whether my background is appropriate for the specific matter or whether another practitioner might be better suited.
Question: How do you handle urgent Of Counsel matters with tight deadlines?
Answer: I understand that law firm referrals frequently involve urgency — an Office Action with a looming response deadline, a cease and desist letter requiring a rapid strategic response, or an FTO analysis needed before a client's product launch scheduled for next week. Rush services are available. For genuinely urgent matters I prioritize initial assessment and communication within 24 hours of referral so the referring firm knows immediately whether I can assist and on what timeline. For Office Action responses approaching deadlines, I can file extension requests on the firm's behalf to create adequate response time while I develop the substantive response strategy. The most important action for urgent matters is contacting me immediately rather than waiting — the more lead time available, even if it is only a few days, the better the options for developing an effective response strategy.
Question: What is your typical turnaround time for Of Counsel opinion work?
Answer: Turnaround time for Of Counsel opinion work — FTO opinions, patentability opinions, validity and invalidity opinions, and non-infringement opinions — depends on the complexity of the technology, the number of patents to be analyzed, and the specificity of the technical information about the client's product or process. For a focused non-infringement opinion on a specific asserted patent against a well-documented product, I can typically provide a written opinion within two to four weeks of receiving complete information. For a comprehensive FTO analysis across a technology landscape with multiple potentially relevant patents, the timeline extends to four to eight weeks depending on the breadth of the search and analysis required. For urgent matters where a faster turnaround is critical — a time-sensitive business decision or litigation deadline — I discuss accelerated timeline options and what can realistically be completed within the available time while maintaining the analytical quality that a reliable opinion requires.
Question: How do you bill for Of Counsel services and what fee structures are available?
Answer: I work with referring firms on fee structures that fit their client engagements and billing practices. For patent prosecution Of Counsel work — application drafting, Office Action responses, prosecution management — and for opinion work — FTO, patentability, validity, and non-infringement opinions — I typically bill hourly at rates that allow the referring firm to bill at their standard rates for the work, or I agree to flat fees per specific deliverable that provide budget certainty for the referring firm and their client. For U.S. Patent Application drafting services, I prefer flat fee arrangements based on the scope of the application, agreed upon after an initial assessment of the matter's complexity. For ongoing portfolio management arrangements, retainer or monthly engagement structures may be appropriate. I am flexible on fee structure and am happy to discuss what arrangement best fits a specific firm's billing model and client relationship structure.
Question: What is the difference between Of Counsel, contract attorney, and outside counsel arrangements for patent work?
Answer: These three engagement structures serve different purposes and create different professional relationships. Of Counsel is a formal professional affiliation between a lawyer and a law firm — implying a close, continuing relationship that is more than a single matter engagement but less than a partnership or employment. Contract attorneys work temporarily inside a firm on a specific matter or for a defined period, typically under the firm's direct supervision. Outside counsel is retained by the firm's client directly for specific matters — the relationship is between the outside attorney and the client rather than between the attorney and the referring firm. For patent of counsel specifically, the of counsel designation is most appropriate when the relationship is ongoing — where I regularly receive patent referrals from the firm and maintain a continuing professional affiliation — versus a single matter where a simple co-counsel or contract arrangement might be more accurate. I discuss the appropriate professional designation with each firm to ensure compliance with applicable bar ethics rules and accurate disclosure to clients.
Question: How do you handle a situation where the referring firm's client wants to establish a direct relationship with you?
Answer: When a client initially referred through a law firm expresses interest in engaging me directly — for example, for patent prosecution work that was initiated through the firm's of counsel relationship — I address the situation transparently and in compliance with professional responsibility obligations. Depending on the structure of the Of Counsel arrangement, direct engagement with a referred client may implicate the firm's client ownership interests or the professional relationship between myself and the firm. I always discuss this type of situation directly with the referring firm before responding to the client's direct engagement inquiry — because the appropriate path forward depends on the specific of counsel agreement terms, whether the original referral matter is complete, and the firm's legitimate interest in the ongoing client relationship. In many cases, the right outcome is for the ongoing patent work to continue through the Of Counsel relationship rather than converting to direct representation — which serves the client's continuity interest while respecting the referring firm's relationship.
Question: What continuing legal education does an Of Counsel patent attorney need to maintain competence?
Answer: Maintaining competence as an Of Counsel patent practitioner requires ongoing education across both the legal and technical dimensions of patent practice. On the legal side, I regularly follow Federal Circuit and PTAB decisions that affect prosecution strategy — including Alice/Mayo doctrine developments, obviousness standard application, claim construction standards, and IPR practice developments. I track USPTO guidance updates including revised examination guidelines for AI and software applications, fee schedule changes, and procedural rule modifications that affect prosecution management. On the technical side, I follow developments in the semiconductor, software, AI, and medical device technology areas where my practice is concentrated — reading technical literature, tracking industry developments, and maintaining familiarity with the current state of the art in each area. The State Bar of Texas requires 15 hours of continuing legal education annually — I consistently exceed that requirement with CLE focused on patent law, IP strategy, and the intersection of technology and law.
Question: Can you serve as Of Counsel for a law firm that does not have its own USPTO-registered practitioners?
Answer: Yes — and this is one of the most common and most valuable Of Counsel arrangements I provide. General practice firms, business law boutiques, and litigation firms that represent technology company clients regularly encounter patent prosecution needs that they cannot handle internally because none of their attorneys are USPTO-registered. An Of Counsel arrangement with me provides these firms with the ability to serve their clients' patent prosecution needs — either with me appearing as Of Counsel to the firm under the firm's letterhead, or working behind the scenes while the firm handles client communication — without the firm needing to hire a full-time patent attorney or refer the client elsewhere. This arrangement lets general practice firms provide comprehensive legal service to technology company clients that might otherwise fragment their legal work across multiple law firms.
Question: What is your process for keeping the referring law firm informed throughout an Of Counsel matter?
Answer: Maintaining the referring firm's awareness of prosecution status is fundamental to a successful of counsel relationship — the referring firm cannot manage its client relationship without current information about what is happening with their client's patent matters. My standard practice for of counsel patent prosecution matters includes: transmitting all USPTO correspondence to the referring firm within 48 hours of receipt with my preliminary assessment; providing advance notice of all response deadlines at least 60 days out for standard matters and immediately upon identification for matters with compressed timelines; sharing draft Office Action responses and application drafts for the firm's review and approval before USPTO filing; and providing quarterly status updates for long-pending matters where no active correspondence is occurring. I calibrate the communication intensity to the referring firm's preference — some firms want detailed involvement in prosecution strategy decisions while others prefer a summary-only approach — and I establish those preferences explicitly at the beginning of each matter.
Question: How do you handle situations where the referring firm disagrees with your prosecution strategy recommendation?
Answer: Prosecution strategy disagreements between Of Counsel and referring firm are a normal and healthy part of the professional relationship — they reflect engaged attention to the client's interests by both sets of counsel. My approach is to present my prosecution strategy recommendation with clear reasoning, identify the alternative approaches available and their respective tradeoffs, and defer to the referring firm's final decision when the disagreement is a matter of strategy rather than ethical obligation. The referring firm has the primary client relationship and maintains ultimate responsibility for the client's legal representation — my role is to provide technically informed prosecution expertise and clear strategic recommendations while respecting the firm's authority over the overall legal representation. The one exception is situations where a proposed course of action would constitute a professional responsibility violation — in those cases I cannot proceed regardless of the firm's preference and would need to decline the specific course of action.
Question: What is a referral fee arrangement and are they appropriate in Of Counsel patent matters?
Answer: Referral fee arrangements — where one attorney pays another a portion of fees received for referring a client — are governed by specific rules under the Texas Disciplinary Rules of Professional Conduct. Texas Rule 1.04 permits fee sharing between attorneys when the client consents to the arrangement, the fee division is proportional to the services performed by each attorney or each attorney assumes joint responsibility for the representation, and the total fee is not excessive. In Of Counsel arrangements where I perform substantial patent prosecution work and the referring firm provides overall client relationship management and legal oversight, fee sharing can be appropriate — with the specific allocation reflecting each party's contribution. I discuss fee arrangement structures with referring firms based on the specific of counsel engagement structure and ensure that any arrangement complies with Texas professional responsibility rules including appropriate client disclosure.
Question: How do you approach Of Counsel matters where the client's invention involves technology you are less familiar with?
Answer: Every technology area has a gradient of technical familiarity — I have deeper expertise in semiconductor, software, optics, and medical device fields and shallower but still meaningful expertise in other areas. When an Of Counsel matter involves technology outside my core expertise, I assess the gap honestly and discuss it transparently with the referring firm before accepting the matter. If the technology is adjacent to my core areas and the gap is manageable through research and technical consultation with the client, I can often provide effective prosecution counsel. If the technology is genuinely outside my competence — specialized organic chemistry, formulation pharmaceuticals, certain biotechnology areas — I communicate that limitation directly so the referring firm can make an informed engagement decision. Accepting an Of Counsel matter for which I am not competent would violate my professional responsibility obligations and would not serve the client's interests — I would rather refer the matter back than provide substandard representation.
Question: What is your approach to Of Counsel matters involving a pending litigation hold?
Answer: Patent matters that involve a litigation hold — where the client or a related party is involved in litigation and specific documents may be subject to preservation obligations — require specific procedural care in prosecution management. USPTO patent prosecution generates significant documentation — application drafts, Office Action analysis, strategy memoranda, examiner interview summaries — some of which might be requested in litigation discovery depending on the nature of the dispute. In Of Counsel matters where a litigation hold is in effect, I coordinate with the referring firm's litigation counsel about document preservation obligations, whether prosecution documents are subject to attorney-client privilege or work product protection, and what specific procedures should be followed for prosecution-related communications given the litigation context. The intersection of active patent prosecution and litigation involving the same patents or technology requires coordinated management that I address proactively with the referring firm.
Question: Can you assist a referring law firm with patent-related client training or educational presentations?
Answer: Yes — providing client-facing educational content is a service I offer to referring law firms as part of an ongoing Of Counsel relationship. Law firms that represent technology company clients often provide value-added services including seminars, webinars, and workshops on IP topics relevant to their clients' businesses. I assist referring firms with these educational programs by: developing presentations on patent strategy, prosecution practice, and IP portfolio management tailored to the firm's specific client base; presenting at client-facing firm events on technical patent topics; writing client alert memoranda on significant Federal Circuit decisions or USPTO rule changes affecting the firm's patent clients; and participating in client onboarding sessions to explain patent prosecution processes to clients new to the patent system. These educational services extend the value of the Of Counsel relationship beyond individual matter prosecution to broader client development and retention — and they are areas where my engineering background and prosecution depth provide distinctive content that generalist IP practitioners cannot offer.
Question: What should a law firm tell its clients about the Of Counsel arrangement?
Answer: Transparency obligations regarding Of Counsel arrangements are governed by professional responsibility rules that require disclosure sufficient to allow clients to make informed decisions about their legal representation. At minimum, clients should understand who is performing the substantive legal work on their patent matters — specifically that a separate attorney with specific patent expertise is handling the prosecution rather than the referring firm's attorneys directly. Clients should also understand how the billing arrangement works — whether they are billed by the referring firm at firm rates with the Of Counsel cost embedded, or whether Of Counsel fees are itemized separately. Some Of Counsel arrangements involve the client being aware that they are receiving services from a separate practitioner; others involve the Of Counsel attorney working in a more behind-the-scenes capacity where the client primarily interacts with the referring firm's attorneys. I discuss client disclosure practices with each referring firm to ensure that whatever disclosure approach is used complies with the applicable professional responsibility rules.
Question: How do you handle the return of client files at the end of an Of Counsel engagement?
Answer: File handling at the conclusion of an Of Counsel engagement follows the same professional responsibility requirements applicable to all attorney-client relationships — client files belong to the client and must be returned or transferred upon the client's request or when the representation concludes. For patent prosecution files, this typically involves: providing the referring firm with copies of all USPTO correspondence, applications, prosecution strategy memoranda, and examiner interview records developed during the Of Counsel engagement; transferring the USPTO power of attorney if representation is being transitioned to new counsel; and maintaining my own files in compliance with the applicable records retention requirements. I maintain organized electronic files throughout every Of Counsel engagement specifically to facilitate smooth transition at the conclusion of the matter — disorganized file management makes transitions difficult and reflects poorly on the quality of service provided. The referring firm should receive a complete, organized file at the end of every Of Counsel engagement.
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Of Counsel Services for Law Firms
For Texas law firms with clients who have patent needs in technically sophisticated fields — semiconductor, software, AI, medical device, optics — I am available for of counsel arrangements that allow your firm to serve those clients' patent needs while maintaining the client relationship.
I bring 17 years of USPTO prosecution experience, a physics degree from UT Austin, hands-on semiconductor engineering experience in laser lithography, optics background, and Unix certification to every of counsel engagement.
I work with firm clients directly or behind the scenes depending on your preference, and I maintain full professional liability insurance and rigorous conflict checking procedures.
Whether you need of counsel support for a single matter or an ongoing arrangement covering all of your firm's patent work, I am open to discussing flexible structures that serve your clients effectively.
Contact me at (512) 293-0710 or sconnolly@austin-patent-attorney.com to discuss an arrangement.
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.
[ Related Services ]
Law firms engaging Of Counsel services often also work with me on:
[USPTO Filing for Foreign Applicants] · [Patent Prosecution & USPTO Practice] · [Responding to Office Actions] · [Freedom to Operate Opinions] · [Inter Partes Review Support]
Initiating an Of Counsel Relationship
The best starting point for an Of Counsel relationship is a specific matter where you have an immediate client need — a pending Office Action in a technically complex semiconductor case, an FTO opinion needed before a product launch in the optical sensor space, or a software patent application that requires Alice/Mayo-savvy claim drafting. Starting with a specific engagement allows both parties to assess fit, communication style, and work quality before committing to a broader ongoing arrangement.
I respond promptly to firm inquiries and can typically assess whether I can assist with a specific matter within 24 hours of receiving the relevant application documents and a description of the client's situation. For Office Action matters approaching response deadlines I prioritize initial review so that timing does not become an obstacle to effective representation.
To discuss an Of Counsel arrangement or a specific matter, contact me directly at (512) 293-0710 or sconnolly@austin-patent-attorney.com. I do not require formal retainer agreements for initial matter-specific engagements — a simple engagement letter covering the specific matter and fee arrangement is sufficient to get started. For firms interested in an ongoing arrangement covering all patent work in specific technology areas I am happy to discuss a more comprehensive Of Counsel agreement that addresses conflict procedures, billing protocols, client communication standards, and professional responsibility compliance in detail.