USPTO Practice & Patent Prosecution Attorney — Austin, Texas
Patent prosecution is the ongoing process of working with the USPTO examiner to get your application allowed — and the scope of protection your patent ultimately provides depends almost entirely on the technical depth and legal precision brought to every Office Action response and examiner interaction.
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17 Years Across Every Technology Art Unit
Over 17 years of practice I have prosecuted patents across semiconductor and electrical art units, software and business method art units, medical device and biotech art units, and mechanical and manufacturing art units. Each requires a different strategic approach to claim drafting office action response and examiner engagement. This broad experience gives me strategic perspective that benefits every client regardless of technology area.
For semiconductor and electronics cases my laser lithography engineering background and physics degree from UT Austin give me genuine credibility with technically trained examiners in these art units. For software and AI cases my Unix certification and technical computing background inform how I navigate the Alice/Mayo framework. For medical device cases my optics background and cross-disciplinary technical foundation help me engage effectively with biotech and medical device examiners.
Taking Over Prosecution For Existing Applications
A common situation I encounter is an inventor or company that filed a patent application with one attorney — or filed pro se — and then received an Office Action they need help responding to. Perhaps the original attorney retired, moved to a different practice area, or is simply unavailable. Perhaps the inventor is looking for more technically experienced prosecution counsel. Whatever the reason I regularly take over prosecution at the Office Action stage and handle it through to grant.
If you have received an Office Action and need help responding time is critical. Office Action response deadlines are strict and missing them can result in abandonment of your application. Contact me as soon as possible after receiving an Office Action so we have adequate time to develop the strongest possible response strategy. I can review your application prosecution history and provide a candid assessment of the best path forward.
[ Patent Prosecution FAQs — Austin, Texas ]
Question: How long does patent prosecution take?
Answer: The total time from filing to grant currently averages two to three years for most utility patent applications. Software and electrical cases tend to take longer. Track One prioritized examination is available for an additional fee if speed is critical.
Question: What happens after a Final Office Action?
Answer: A Final Office Action is not truly final. Options include filing a Request for Continued Examination, appealing to the Patent Trial and Appeal Board, filing a continuation application, or filing an after-final amendment. I evaluate all options and recommend the approach most likely to achieve your goals.
Question: Can you take over my prosecution if someone else filed my application?
Answer: Yes — I regularly handle Office Action responses and prosecution for applications filed by other attorneys or pro se inventors. You file a change of power of attorney with the USPTO and I take over from there. Contact me promptly so we have adequate time before any response deadline.
Question: What is the Patent Prosecution Highway (PPH) and how do you use it to accelerate my US patent prosecution?
Answer: PPH is a bilateral program between the USPTO and partner foreign offices — the EPO, JPO, KIPO, CNIPA, and most other major offices — that lets you request accelerated US examination once at least one claim has been found allowable abroad. A favorable EPO or JPO result, for example, lets me file a PPH request presenting the allowed foreign claims and their correspondence to your pending US claims. The USPTO gives PPH applications priority, typically producing a first Office Action within two to four months rather than the standard 18 to 24. For Austin companies with active international prosecution, PPH creates a way to accelerate US prosecution off favorable foreign results without paying the full Track One fee.
Question: What is an after-final consideration pilot program and how can it help advance my prosecution?
Answer: The After Final Consideration Pilot — currently running at the USPTO — provides applicants with a streamlined mechanism for obtaining examiner consideration of certain responses submitted after a final rejection without requiring the filing of a formal Request for Continued Examination. Under AFCP, the applicant submits an after-final amendment that does not broaden any claim and requests an interview with the examiner to discuss the amendment. If the examiner determines that the amendment places the application in condition for allowance, the examiner can allow the application without requiring an RCE. AFCP is valuable because it can resolve prosecution after a final rejection faster and at lower cost than a formal RCE when the amendment needed for allowance is narrow and the examiner is receptive to discussion. I evaluate AFCP potential after every final rejection as part of assessing all available post-final prosecution options.
Question: What is patent prosecution laches and can it affect my ability to enforce a patent that took many years to prosecute?
Answer: Patent prosecution laches is an equitable defense to patent infringement based on an unreasonable and unexplained delay in prosecution — where the patent holder delayed prosecution for years while an infringer developed its commercial position in reliance on the apparent abandonment of the patent. The Supreme Court's SCA Hygiene Products decision (2017) established that prosecution laches remains a viable defense in patent infringement cases. Prosecution laches typically requires showing both an unreasonable delay in prosecution and prejudice to the infringer from that delay — the infringer must have been materially prejudiced by the delay in ways that make enforcement inequitable. For patent holders concerned about prosecution laches risk, actively advancing prosecution — filing requests for continued examination when prosecution stalls, responding promptly to Office Actions, and maintaining a documented record of prosecution activity — is the most effective prophylactic measure. I advise clients on prosecution pacing specifically to avoid creating prosecution history that could support a laches defense.
Question: How do you handle a situation where the USPTO examiner has made a legal error in an Office Action?
Answer: USPTO examiners make legal errors in Office Actions with meaningful regularity — applying the wrong legal standard for obviousness, misconstruing claim language under improper claim construction, applying prior art references in ways that mischaracterize what those references actually teach, or citing statute in ways that are factually inapplicable to the specific claims. When I identify a legal error in an examiner's rejection I address it directly and specifically — citing the applicable Federal Circuit case law, the relevant MPEP section, or the specific statutory language that the examiner's rejection contradicts, and explaining precisely why the examiner's application of the law to the specific facts of the application is incorrect. Examiner interview requests accompanying written responses are particularly effective when legal errors are at issue — giving the examiner an opportunity to reassess the position in direct discussion before the official record of their error becomes a more entrenched prosecution history. I am direct and precise in identifying examiner legal errors without the excessive diplomatic hedging that sometimes weakens legitimate prosecution arguments.
Question: What is a pre-examination request for consideration of information disclosure statement and when should I file one?
Answer: A pre-examination IDS request allows an applicant to submit information disclosure statement materials before examination begins — typically submitted at the time of filing or shortly after filing to ensure the examiner has access to all relevant known prior art before formulating their initial position. Filing a comprehensive IDS early in prosecution serves several strategic purposes: it satisfies the applicant's duty of disclosure before examination begins, it may accelerate prosecution by giving the examiner a comprehensive prior art record to work with rather than discovering references piecemeal during examination, and it establishes a clear record of what prior art the applicant was aware of at filing — which can be relevant in litigation contexts where the unenforceability question of what was and was not disclosed to the USPTO may arise. I file IDS documents as a standard component of every prosecution matter, including all prior art found during my pre-filing search and any references cited in related applications worldwide.
Question: What is the role of declaration evidence in patent prosecution and how does it differ from legal arguments?
Answer: Legal arguments in prosecution respond to examiner rejections by explaining why the claims are patentable based on the law and the prosecution record — why the prior art does not anticipate, why the combination would not have been obvious, why the claims are adequately enabled. Declaration evidence introduces new factual information into the prosecution record — inventor declarations establishing conception dates, expert declarations establishing the level of ordinary skill in the art, technical declarations demonstrating unexpected results, and comparative data declarations supporting non-obviousness arguments. Declaration evidence is particularly valuable when the examiner's rejection is based on a factual premise that is incorrect — for example, an obviousness rejection that assumes a skilled artisan would have been motivated to combine references when technical evidence demonstrates the combination would not have worked as the examiner assumed. I evaluate declaration potential after every Office Action and advise clients on when the investment in preparing and filing a declaration is justified by the strength of the evidentiary argument it enables.
Question: What is an Examiner's Answer in an appeal, and what options do I have after receiving one?
Answer: After a Notice of Appeal and Appeal Brief are filed, the examiner may file an Examiner's Answer responding to your arguments — typically maintaining the rejections and sometimes introducing new points not in the original final rejection. New points in the Examiner's Answer entitle you to file a Reply Brief addressing them specifically, within two months. After that period closes, the case goes to the PTAB for decision, typically 12 to 18 months later. Before the PTAB rules, you retain the option to file an RCE and withdraw the appeal, resuming prosecution instead — which can make sense if the Examiner's Answer raised new prior art or arguments better handled through amendment than through the appeal itself. I evaluate every Examiner's Answer to determine whether continuing the appeal or returning to prosecution better serves your interests.
Question: What is a restriction requirement and how do I respond to one?
Answer: A restriction requirement asserts that your application claims two or more independent and distinct inventions that should be pursued separately. You elect one invention for prosecution in the current application, and either traverse the restriction (formally argue against it) or accept it — the non-elected inventions can go into divisional applications that keep the original filing date. Traversing is worth doing when the examiner's reasoning is flawed, but most restrictions are accepted, since divided inventions can each still be pursued without losing rights. Even if you traverse and the examiner maintains the restriction anyway, you should typically still elect an invention to avoid abandonment while preserving your traversal arguments for the record.
Question: What is the patent examination backlog and how does it affect my prosecution timeline?
Answer: The USPTO receives over 700,000 patent applications annually and maintains a substantial examination backlog. The average time from filing to first Office Action — the "pendency" period — varies significantly by technology area, from under 12 months in some mechanical art units to over 24 months in software and AI art units. The overall average time to disposition (either patent grant or final rejection) is currently approximately 23 months for utility patents. Track One prioritized examination reduces this to approximately 6-12 months for a higher fee. I advise clients on whether Track One makes sense for their specific application based on their business timeline and the additional cost.
Question: What happens when the USPTO examiner and I fundamentally disagree on claim scope?
Answer: When examiner disagreement cannot be resolved through written responses and examiner interviews, the appeal process provides a pathway to independent review. A notice of appeal initiates appeal to the Patent Trial and Appeal Board, followed by an appeal brief explaining why the examiner's rejections are legally incorrect. The PTAB reviews the record and issues a written decision. If the PTAB affirms the rejection, the decision can be appealed to the Federal Circuit. Appeals are time-consuming and expensive but are often the right choice when the examiner has taken a legally incorrect position that the applicant reasonably believes the PTAB will reverse. I evaluate appeal prospects candidly with clients and recommend appeal when the merits justify it.
Question: What is an examiner interview and when should I request one?
Answer: An examiner interview is a direct conversation — by phone or video — between the applicant's attorney and the USPTO examiner examining the application. Examiner interviews can be extraordinarily effective at advancing prosecution because they allow real-time discussion of claim language, prior art distinctions, and potential amendments in a way that written Office Action responses cannot. I request examiner interviews in several situations: when a complex technical distinction is difficult to articulate clearly in writing, when I believe the examiner has misunderstood the invention, when a specific proposed amendment needs examiner buy-in before formal submission, or when prosecution has stalled and direct engagement might break the impasse. My engineering background makes examiner interviews particularly productive in technical conversations with semiconductor, software, and medical device art unit examiners.
Question: What is the Manual of Patent Examining Procedure and why does it matter for my prosecution?
Answer: The Manual of Patent Examining Procedure — MPEP — is the official USPTO guide to patent examination procedures, rules, and legal standards that patent examiners and practitioners use throughout prosecution. It covers everything from filing requirements and examination procedures to the legal standards for novelty, obviousness, enablement, and every other patentability requirement. I use the MPEP daily in prosecution — citing specific MPEP sections in Office Action responses to support legal arguments, understanding how examiners are trained to apply specific rules, and identifying procedural options available at each stage of prosecution. The MPEP is publicly available at mpep.uspto.gov and is comprehensive, though dense reading for non-practitioners.
Question: What is a pre-appeal brief conference and should I request one?
Answer: A pre-appeal brief conference is an optional USPTO proceeding available after a final rejection in which a panel of three USPTO examiners — including the primary examiner and a supervisory examiner — reviews the rejection before a formal appeal is filed. The applicant submits a brief five-page pre-appeal brief explaining why the rejections are legally incorrect, and the panel determines whether the rejections should be maintained, modified, or withdrawn. Pre-appeal brief conferences are underutilized but can be highly effective — they provide a fresh perspective on the rejection from senior examiners who may be less invested in the original rejection than the primary examiner and can result in advancement to allowance without the time and cost of a full appeal. I evaluate pre-appeal brief conference potential after every final rejection.
Question: What is an after-final amendment and when can one be filed?
Answer: An after-final amendment is a claim amendment filed after a final rejection but before the application is abandoned or an appeal is filed. After-final amendments are subject to specific procedural restrictions — the examiner has discretion to enter or refuse them and they must meet specific requirements depending on the type of amendment. Amendments that place the application in condition for immediate allowance are given preferential treatment. Amendments that require additional searching or examination are less likely to be entered. After-final amendments are often combined with requests for continued examination to ensure they receive full consideration. The after-final period is time-critical and the strategic options must be evaluated quickly to avoid missing important deadlines.
Question: Can I amend my patent claims at any time during prosecution?
Answer: Claim amendments are available at certain stages of prosecution but are subject to restrictions. Before the first Office Action, applicants can file preliminary amendments. After a non-final Office Action, claim amendments can be freely filed as part of the response. After a final Office Action, claim amendments face procedural restrictions and examiner discretion. After a Request for Continued Examination is filed, prosecution reopens and amendments can be submitted. During an appeal proceeding, amendments are generally not available. Understanding when and how to time amendments — and whether to amend or argue at each stage — is one of the most important strategic decisions in prosecution.
Question: What is an inter partes review and how is it different from patent prosecution?
Answer: Inter partes review is a post-grant proceeding at the USPTO's Patent Trial and Appeal Board — distinct from the examination process — in which a third party challenges the validity of an already-granted patent based on prior art patents or printed publications. Unlike prosecution, which is a process between the applicant and the examiner to obtain a patent, IPR is a contested adversarial proceeding between the patent holder and the petitioner, with three PTAB judges making the validity determination. IPR is available within one year of service of a complaint alleging infringement of the challenged patent. The proceeding involves institution decisions, patent owner responses, discovery, oral argument, and a final written decision that can cancel, narrow, or uphold patent claims.
Question: How does the track one prioritized examination program work?
Answer: Track One prioritized examination is a USPTO program that allows utility and plant patent applicants to request expedited examination for an additional government fee. Track One applications are examined before standard-track applications in the same art unit and receive a final disposition — either allowance or final rejection — within 12 months of the Track One request being granted. Track One is available for up to 10,000 applications per fiscal year on a first-come, first-served basis. It requires specific claim limitations — no more than 4 independent claims and no more than 30 total claims — and the applicant must pay the Track One fee at the time of filing or within a short window after filing. I advise clients on whether Track One makes sense based on their business timeline and the additional cost.
Question: What is the patent prosecution highway and how can it speed up my US prosecution?
Answer: The Patent Prosecution Highway is a program between the USPTO and partner foreign patent offices that allows applicants to request expedited examination of corresponding applications in each participating office when at least one claim has been found allowable in the other office. If the Japanese Patent Office found your claims allowable for example, you can request PPH fast-track examination at the USPTO based on the JPO's positive determination — and vice versa. PPH significantly reduces examination pendency for applications where a corresponding foreign application has received a favorable examination outcome, and it is available between the USPTO and virtually all major patent offices including the EPO, JPO, KIPO, and CNIPA. I regularly use PPH to advance prosecution when favorable foreign examination results are available.
Question: What is a petition to make special and when should I file one?
Answer: A petition to make special is a request for expedited examination based on circumstances other than Track One that the USPTO has determined warrant accelerated handling. Grounds for petitions to make special include the applicant's age — 65 or older — or health, where the applicant is in ill health and may not survive normal prosecution; environmental quality and energy — inventions related to energy conservation, environmental quality, or atomic energy; and prospective manufacture — where the applicant can show that a manufacturer is ready to produce the invention as soon as a patent is granted. Petitions to make special for age and health are the most commonly used and do not require the payment of the Track One fee — making them an economical alternative for qualifying applicants who need faster prosecution.
Question: What is a continuation application and how does it differ from a divisional application?
Answer: A continuation application is filed voluntarily to pursue additional or different claims based on the same disclosure as a pending parent application. A divisional application is filed in response to a restriction requirement to pursue claims to a non-elected invention. Both types of applications claim the benefit of the parent application's filing date and must be filed while the parent is still pending. The key distinction is that continuations are strategic choices by the applicant while divisionals are procedurally required responses to restriction requirements. Both serve the important portfolio-building function of allowing multiple related patents to emerge from a single original disclosure.
Question: What is a notice of allowance and what do I do when I receive one?
Answer: A notice of allowance is the USPTO's communication informing you that all claims in your pending patent application have been found allowable and will be issued as a patent upon payment of the issue fee. Upon receiving a notice of allowance you must pay the issue fee within three months — extendable to six months with payment of extension fees — or your application will be abandoned. You also have a limited window after allowance — typically until payment of the issue fee — to make certain corrections to the application or to file continuation applications before the parent issues. After payment of the issue fee the patent is scheduled for issuance on an upcoming Tuesday. I notify clients immediately upon receipt of a notice of allowance and handle all post-allowance procedures including issue fee payment.
Question: What is deferred examination and can I delay prosecution after filing?
Answer: The United States does not have a formal deferred examination program like some foreign patent offices — once a non-provisional application is filed it is placed in the examination queue automatically. However, there are practical ways to manage prosecution timing. Filing a provisional application first defers the start of examination until the non-provisional is filed, which can be delayed up to 12 months after the provisional. Requesting continued examination after receiving a final rejection effectively reopens prosecution but does not delay the initial examination period. In practice, USPTO examination backlogs create natural delays before examination begins — currently 12 to 24 months in most art units — which provides a natural deferral window without any affirmative steps.
Question: How do I know which art unit will examine my patent application?
Answer: Patent applications are assigned to the appropriate art unit based on their primary claim subject matter classification using the Cooperative Patent Classification system. The art unit assignment happens administratively after filing and is reflected in the filing receipt and subsequent correspondence. You can check your application's art unit assignment through the USPTO's Patent Center system using your application number. If your application is assigned to an art unit that you believe is incorrect for your technology — a software patent assigned to a mechanical art unit for example — you can file a petition to transfer the application to the more appropriate art unit, though these petitions are granted selectively.
Question: What is a 37 CFR 1.131 declaration and how can it help during prosecution?
Answer: A Rule 131 declaration — also called an affidavit to swear behind prior art — is a document in which the inventor declares that they conceived of the claimed invention before the effective date of a prior art reference being cited against the claims. Under pre-AIA law, a Rule 131 declaration could be used to remove prior art that predates the application filing date by establishing an earlier date of invention. Under post-AIA law, Rule 131 is of more limited use — it can only be used to remove prior art disclosures that qualify as the inventor's own work or work made available by others who obtained the subject matter from the inventor. For most current applications this is a more limited tool than it was historically, but it remains available in specific circumstances.
Question: What is an examiner interview record and why should I care about it?
Answer: An examiner interview record is the USPTO's official documentation of each telephonic or in-person interview between the examiner and the applicant's representative. The interviewing examiner is required to create a record summarizing the substance of the interview — what was discussed, what amendments were proposed, and what the examiner's preliminary reaction was. These records become part of the public file wrapper after publication and can be reviewed in future litigation as part of the prosecution history. I review interview records carefully to ensure they accurately reflect what was discussed and correct any material inaccuracies — because an inaccurate interview record can create prosecution history estoppel or admissions that harm the patent's scope in ways the interview itself did not intend to create.
Question: How does filing in multiple countries through PCT affect my US prosecution strategy?
Answer: Filing a PCT application simultaneously with or shortly after a US non-provisional application creates prosecution coordination considerations that affect strategy in each jurisdiction. The international search report and written opinion produced during the PCT international phase provide prior art intelligence that can inform US prosecution — amendments made in response to the ISR can be incorporated into the US prosecution strategy before examination begins in earnest. Conversely, claim amendments and prosecution arguments made in US examination become part of the US file wrapper and should be considered for their implications on parallel foreign prosecution. I coordinate US prosecution strategy with PCT international prosecution to ensure that choices made in each jurisdiction are consistent with the overall global portfolio strategy.
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Patent Prosecution Services
Seventeen years of USPTO prosecution experience across semiconductor, software, medical device, and mechanical technology areas — backed by a physics degree from UT Austin and hands-on engineering experience in laser lithography and optics.
I offer a free 30-minute phone consultation to discuss your prosecution situation whether you have an application just filed, an Office Action pending, or a prosecution strategy you want to reassess.
Every client works directly with me throughout prosecution — not a paralegal or junior associate — so the technical expertise that makes my prosecution work effective is consistently applied to your matter from filing through grant. I also take over prosecution for applications filed by other attorneys when a more technically experienced approach is needed.
Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form to schedule your consultation.
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.
What Is Patent Prosecution?
Patent prosecution is the process of working with the United States Patent and Trademark Office to obtain a granted patent from a filed application. It begins when your application is assigned to a USPTO examiner and continues through examination, office action responses, appeals if necessary, and ultimately patent grant or final rejection. For most utility patent applications this process takes two to three years and involves at least one round of substantive back-and-forth with the examining attorney.
Prosecution is where the quality of your patent is determined. The scope of protection you ultimately receive — how broad or narrow your patent claims are — depends almost entirely on how the prosecution is handled. An experienced prosecution attorney who understands both the legal framework and the underlying technology makes the difference between a patent that provides real competitive protection and one that competitors can easily design around.
The Office Action — The Heart of Prosecution
After your patent application is filed and enters the examination queue a USPTO examiner with relevant technical expertise reviews it and searches the prior art. In the vast majority of cases the examiner issues an Office Action raising objections or rejections. Receiving an Office Action is completely normal — it is the beginning of a dialogue not a denial. The most common rejections are anticipation under Section 102 and obviousness under Section 103.
I respond to Office Actions by making legal arguments for why your claims are patentably distinct from the cited prior art, amending claims when strategically appropriate to overcome rejections while preserving maximum scope, and engaging directly with the examiner through examiner interviews when that approach is likely to advance prosecution efficiently. My engineering background is critical here — I can engage with technically complex prior art at an engineering level which is how technically trained USPTO examiners respond most effectively.
[ Related Services ]
Clients filing provisional applications often also work with me on:
[Responding to Office Actions] · [Continuation Patent Applications] · [Patent Portfolio Management] · [Of Counsel Services for Law Firms] · [USPTO Filing for Foreign Applicants]
Continuation Strategy During Prosecution
Sophisticated patent portfolios are built through continuation applications filed while your original application is still pending. A continuation lets you pursue additional or broader claims based on your original specification — claims directed at competitor products as they emerge or at new features of your evolving technology. I plan continuation strategy from the very first filing drafting original specifications comprehensive enough to support future claims.
The decisions made during prosecution about claim amendments and arguments create prosecution history that affects the scope of your issued patent and future continuation claims. I handle these decisions with both the immediate goal of advancing prosecution and the long-term goal of preserving the broadest possible claim scope and continuation options. This forward-looking prosecution strategy is one of the most valuable things I bring to long-term client relationships.
Examiner Interviews — An Underutilized Tool
One of the most effective and underutilized tools in patent prosecution is the examiner interview — a direct conversation with the USPTO examiner assigned to your application. An experienced prosecution attorney who can speak the examiner's technical language understand their specific objections at a technical level and propose claim amendments that address those objections in real time can often advance prosecution significantly faster than written responses alone.
I regularly use examiner interviews as a prosecution strategy when the technology and examiner make it appropriate. My engineering background in laser lithography semiconductor manufacturing and optics gives me the technical credibility to make those conversations productive — examiners respond differently to technical arguments from someone who demonstrably understands the technology versus purely legal arguments from someone who does not.
