Patent Search & Patentability Opinion Attorney — Austin, Texas
A comprehensive prior art search before you file identifies the landscape your claims need to navigate — saving thousands of dollars in prosecution costs and significantly strengthening the patent application drafted on your behalf by an attorney who understands the technology at an engineering level.
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Why a Patent Search Matters
Before I draft a patent application for any client I conduct a thorough prior art search. It is not optional — it is how I understand the landscape your invention has to navigate and it directly affects the quality of the claims I draft on your behalf. A comprehensive prior art search identifies existing patents published applications academic papers and other public disclosures that might affect your ability to obtain broad patent protection.
Finding this information before you file rather than during USPTO examination allows us to draft around the prior art from the start — resulting in stronger claims and smoother prosecution. Examiners will find the most relevant prior art. The question is whether you find it first and draft your claims accordingly or whether you discover it after filing when your options are more limited.
What a Professional Search Covers
My patent searches cover the USPTO full-text patent database, Google Patents international coverage, European Patent Office Espacenet database, academic and technical literature including IEEE publications and arXiv preprints, forward and backward citation analysis, and relevant Cooperative Patent Classification code searches. This is significantly more comprehensive than a preliminary keyword search an inventor might conduct independently.
For technically complex inventions in semiconductor, software, optics, and medical device fields the depth and accuracy of the prior art search depends critically on the searcher's technical understanding. My physics degree from UT Austin, laser lithography engineering background, and optics experience mean I know what to look for and how to read highly technical patent documents accurately — a significant advantage over searchers without genuine technical depth in the relevant field.
Patentability Opinion — What You Receive
After completing the search I provide a written patentability opinion assessing whether your invention is likely novel and non-obvious over the prior art found, identifying the closest prior art references, mapping those references to your invention's key features, recommending a claim strategy based on the search results, and advising on whether to proceed with a patent application and what scope of protection is realistically achievable.
This written opinion gives you an informed basis for deciding whether to invest in a full application and provides strategic guidance on how to position your claims for the best possible prosecution outcome. For clients who proceed with an application the patentability opinion directly informs the claim drafting — producing a more targeted and strategically sound application from the start.
How My Engineering Background Improves Search Quality
A patent search is only as good as the searcher's ability to recognize relevant prior art when they find it. For technically complex inventions a searcher who does not understand the underlying technology can miss highly relevant prior art that a USPTO examiner will find during prosecution. My background as a manufacturing process engineer specializing in laser lithography, combined with optics experience and a physics degree from UT Austin, means I approach prior art searches the way an engineer would.
When I tell a client that their invention is likely patentable over the prior art found I am making that assessment with genuine technical understanding of both the invention and the prior art — not just a legal comparison of abstract descriptions. That difference in search quality directly affects the strength of the patent application that follows and the likelihood of achieving broad protection through prosecution.
Freedom To Operate vs. Patentability Search
A patentability search answers the question of whether you can get a patent — is your invention novel and non-obvious over existing prior art. A freedom to operate search answers a different question — can you practice your invention without infringing someone else's existing patents. These are distinct analyses that answer fundamentally different questions and are needed at different stages of product development.
Many clients need both. A patentability search is appropriate before filing a patent application. A freedom to operate analysis is appropriate before launching a product or commercializing a technology. I provide both as separate services and advise clients on when each is needed based on their specific situation and stage of development
Prior Art Search for Litigation Support
Prior art searches are also valuable in litigation contexts — specifically for challenging the validity of competitor patents. An invalidity search seeks to find prior art that was not considered during prosecution and that anticipates or renders obvious one or more claims of an issued patent. Finding such art can provide the basis for inter partes review petitions at the PTAB or invalidity defenses in district court litigation.
My engineering background is particularly valuable for invalidity searches in technically complex fields where identifying the most relevant prior art requires genuine technical understanding of the claimed invention and the prior art landscape. If you are facing a patent infringement assertion from a competitor I can conduct a focused invalidity
search to assess whether the asserted patent is vulnerable to challenge.
[ Patent Search & Patentability Opinion FAQs — Austin, Texas ]
Question: Do I need a patent search before filing?
Answer: While not legally required, I strongly recommend a professional prior art search before investing in a full patent application. A search identifies potential obstacles early, informs claim drafting strategy, and can save thousands of dollars in prosecution costs if significant prior art is found before rather than during USPTO examination.
Question: How long does a patent search take?
Question: Can I do my own patent search?
Answer: A comprehensive professional search typically takes two to four weeks depending on technology complexity. The written patentability opinion is usually delivered within a week of completing the search. We discuss timing and urgency during your free consultation.
Answer: Yes — Do your own due diligence before hiring a patent attorney — Google Patents and the USPTO database are excellent free tools for preliminary research; however, I can't rely on another's search, and a professional patent search is still necessary. A professional search is significantly more comprehensive covering classification-based searches citation analysis and non-patent literature that most inventors cannot effectively search independently.
Question: What is the difference between a patentability search conducted before filing and an invalidity search conducted during litigation?
Answer: A patentability search asks whether an invention is novel and non-obvious over the existing prior art — looking for references that predate the intended filing date and that disclose the inventive concept. An invalidity search challenges an already-issued patent's validity — looking for references that predate the patent's effective filing date and that anticipate or render obvious the specific issued claims. These are related but distinct analyses that differ in their temporal reference point, their claim specificity, and their strategic purpose. A patentability search informs whether to file and how to draft claims. An invalidity search informs whether to assert a patent you hold, how to defend against a patent being asserted against you, or whether to petition for inter partes review of a competitor's patent. The technical rigor required for an invalidity search is typically higher because the claims to be invalidated are already defined and the analysis must be element-by-element against specific claim language.
Question: How does a patentability opinion from the Law Office of Sean Christian Connolly differ from a preliminary search I could do myself on Google Patents?
Answer: A self-conducted Google Patents search identifies patents and applications using keyword queries in the specific language you use to describe your invention. A professional patentability opinion conducted by a practitioner with engineering expertise in your technology area goes significantly further in four dimensions. First, classification-based searching through the CPC taxonomy finds relevant patents that use different terminology than your keywords — a laser lithography patent using "photolithographic exposure" terminology is found by classification searching but missed by a keyword search for "laser semiconductor manufacturing." Second, technical literature searching covers IEEE publications, conference proceedings, and academic papers where prior art for semiconductor, AI, and medical device inventions is frequently found first. Third, engineering expertise allows recognition of relevant prior art when it appears in different technical vocabulary than you would naturally use. Fourth, legal analysis maps the found prior art to your specific inventive concept and assesses the realistic claim scope available given the prior art landscape.
Question: How long does a professional patent search take and when should I schedule one relative to my planned filing date?
Answer: A professional prior art search and written opinion for most technology areas takes one to two weeks for the search itself plus several days for the written opinion preparation — a total of approximately two to three weeks from the time I receive adequate invention disclosure documentation. I recommend initiating the search at least four to six weeks before your planned filing date — enough time to receive the search results, review the prior art found, and incorporate the findings into the claim drafting strategy before the application is filed. For inventions in densely patented technology areas — semiconductor devices, AI systems, specific pharmaceutical formulations — or where the technical literature search involves non-English-language sources, additional time should be planned. Contact me as soon as you have decided to pursue patent protection rather than waiting until you are ready to file — early engagement produces better search quality and better-informed filing decisions.
Question: Can you conduct a patent search for an invention in a technology area you have not personally worked in?
Answer: Yes — although my deepest technical expertise is in semiconductor, optics, software, and mechanical engineering, I conduct professional prior art searches across all technology areas I handle including medical device, chemical processes, and electronics. The professional search methodology — classification-based CPC searching, technical literature coverage, and engineering judgment in relevance assessment — applies across technology areas even when the specific technical domain is outside my direct engineering experience. For technology areas at the outer boundary of my technical expertise I am transparent with clients about where additional technical context from the inventor is most valuable in interpreting search results, and I calibrate my opinion's confidence level to the degree of technical familiarity I have with the specific prior art found.
Question: What is a freedom to operate landscape map and when does my company need one?
Answer: A patent landscape map is a systematic visualization of the patent activity in a specific technology area — identifying the major patent holders, the technology categories they have covered, the temporal filing trends, and the geographic distribution of protection. Landscape mapping is most valuable before significant R&D investment decisions — revealing whether a target technology area is heavily patented by competitors before you commit development resources, identifying white spaces where meaningful innovations remain unprotected, and providing competitive intelligence about where major players are directing their technology development based on their patent filing activity. For Austin technology companies entering new technology areas, preparing for major product development programs, or evaluating acquisition targets, a patent landscape map provides strategic intelligence that individual FTO analyses and patentability searches do not capture. I prepare landscape analyses calibrated to the specific strategic questions each client needs answered.
Question: What databases do you use when conducting a professional patent search?
Answer: A comprehensive professional prior art search covers multiple databases rather than relying on any single source. For US patent coverage I use the USPTO Patent Full-Text and Image Database and Google Patents. For international patent coverage I use the European Patent Office's Espacenet database and WIPO's PatentScope. For technical literature I use IEEE Xplore for electrical and semiconductor publications, PubMed for biomedical research, arXiv for physics, mathematics, and computer science preprints, and the ACM Digital Library for computing and software publications. I also search relevant conference proceedings — ISSCC for semiconductor circuit design, CVPR for computer vision, NeurIPS for AI — and international patent databases in key technology areas. The combination of patent and non-patent literature searching is essential for technically complex inventions where the most relevant prior art may not be in patent databases at all.
Question: Can I do my own patent search, and how accurate are free tools like Google Patents compared to a professional search?
Answer: You can and should do preliminary research yourself before our consultation — Google Patents and the USPTO database are excellent free tools, and it makes our conversation more productive. But a self-conducted search has real limitations, and I can't simply rely on your search in place of my own. Classification-based searching through the CPC taxonomy finds relevant patents using entirely different terminology than your keywords — most inventors don't know that taxonomy. Non-patent literature searches require access to specialized databases most inventors don't use routinely. Recognizing when prior art describes your concept in different vocabulary takes both technical and legal experience. And self-searches carry natural confirmation bias — people tend to search for what they already believe exists rather than hunting systematically for the most damaging prior art. A professional search is more comprehensive and more objective on every one of these dimensions.
Question: What does a written patentability opinion contain?
Answer: A professional written patentability opinion includes an identification of the prior art search methodology, a description of the prior art references found that are most relevant to your invention, an analysis mapping the relevant prior art to the specific features of your invention, an assessment of whether the invention appears novel and non-obvious over the identified prior art, identification of which specific aspects of your invention appear most protectable, a recommended strategy based on the prior art landscape, and an overall recommendation on whether to proceed with a patent application and what realistic scope of protection is achievable. This opinion gives you both a legal assessment and a strategic roadmap for the patent application that follows.
Question: Can a patent search guarantee that my invention will get a patent, or that it won't be rejected for prior art?
Answer: No — even a comprehensive professional search can't guarantee a patent or guarantee against rejection. It identifies known prior art at the time of the search, but can't guarantee nothing relevant was missed, that the examiner's own search won't turn up more, or that art published after the search but before filing won't become relevant. What it does provide is the most comprehensive available assessment of the known landscape, a real improvement in claim quality, and reduced risk of surprises — but prosecution always involves some irreducible uncertainty. The value is in making informed decisions before committing resources, not guaranteeing an outcome.
Question: How do I provide you with enough information about my invention for a meaningful search?
Answer: The more specific technical information you provide the more targeted and accurate the search will be. Useful information includes a written description of what your invention does and how it works at a technical level, the specific problem it solves and why existing solutions are inadequate, the key technical features that you believe distinguish your invention from what exists, any prior art you are already aware of that is close to your invention, engineering drawings or diagrams illustrating the invention, and the commercial application you intend for the invention. I also ask about the technology area specifically — knowing that your invention involves semiconductor DRAM architecture rather than general memory technology, for example, allows me to search the right classification codes rather than casting a broad net that wastes time and misses the most relevant art.
Question: What is a prior art search for litigation purposes and how does it differ from a pre-filing search?
Answer: A litigation invalidity search seeks prior art that anticipates or renders obvious the specific claims of an already-issued patent that is being challenged. Unlike a pre-filing patentability search that looks for art predating a potential filing date, a litigation invalidity search is constrained by the challenged patent's effective filing date — only art predating that date is relevant. It is also more narrowly targeted — focused specifically on finding the most powerful invalidating references for the specific claim elements at issue rather than broadly assessing patentability. Litigation invalidity searches often extend into more obscure sources than pre-filing searches — including foreign language technical publications, historical product documentation, and archived standards documents — because the goal is finding the single most devastating prior art reference rather than assessing general novelty.
Question: How far back does prior art go — could a 50-year-old patent be prior art against my application?
Answer: Yes — prior art has no expiration date for patentability purposes. A patent issued in 1970, a journal article published in 1955, or a product catalog from 1985 can all constitute prior art against a patent application filed today if the content of those documents discloses your claimed invention. The relevant question is not when the prior art was created but whether it predates your effective filing date and whether it discloses the key elements of your claimed invention. For some technology areas — mechanical devices, chemical compositions, certain manufacturing processes — prior art from decades ago remains very relevant because the foundational concepts have been known for a long time even if specific implementations are newer.
Question: What is an obviousness search and how is it different from a novelty search?
Answer: A novelty search looks for single prior art references that individually disclose every element of your claimed invention — prior art that anticipates your claims under Section 102. An obviousness search considers combinations of prior art references that together disclose all the elements of your claims — the question being whether it would have been obvious to someone skilled in the art to combine those references in the manner claimed. Obviousness searches are broader and more nuanced than pure novelty searches because the relevant prior art for an obviousness rejection may be spread across multiple documents that individually do not anticipate any claim but that in combination suggest your invention. A professional pre-filing search addresses both novelty and obviousness concerns — identifying not just single-reference anticipating art but also the combinations of references that might support an obviousness rejection.
Question: How does the prior art search affect how you draft my patent claims?
Answer: The prior art search directly informs every claim drafting decision I make. After completing the search I know which features of your invention are clearly novel — no prior art discloses them — and which features are close to existing prior art that claims must carefully distinguish. This knowledge lets me draft independent claims at the maximum breadth that the prior art allows — capturing your genuine inventive contribution without reading on the prior art. Without a search, claims are drafted in relative ignorance of where the prior art boundaries are, producing claims that are either too broad to survive examination or too narrow to provide meaningful protection. The search is not a separate preliminary exercise — it is the foundation on which the entire claim drafting strategy is built.
Question: What is a clearance search and when is it used?
Answer: clearance search — also called a right-to-use search or freedom to operate search — determines whether a specific product or process can be commercially practiced without infringing the valid, enforceable patent rights of third parties. It is used before product launch, before significant manufacturing investment, before entering a new market, or when a business partner or investor requests IP clearance as part of due diligence. A clearance search differs from a patentability search in that it focuses on the claims of currently enforceable patents rather than all published prior art, and it analyzes infringement rather than novelty. The clearance search results in a freedom to operate opinion that assesses the specific infringement risk and recommends design-around strategies if relevant patents with potentially infringed claims are identified.
Question: Can a patent search identify prior art that invalidates a competitor's existing patent?
Answer: Yes — this is called an invalidity search and it is one of the most strategically valuable prior art searches available. If a competitor holds a patent that is threatening your freedom to operate or that has been asserted against you, an invalidity search specifically seeks prior art that predates the competitor's patent and that anticipates or renders obvious its claims. Finding such prior art creates the basis for challenging the patent's validity — either as a defense in litigation, as the basis for an inter partes review petition at the PTAB, or as negotiating leverage in licensing discussions. The quality of an invalidity search depends heavily on the searcher's ability to find non-obvious prior art sources — including foreign language technical publications, academic conference proceedings, and historical product documentation that competitors may believe were not found during the original examination.
Question: How long does a professional patent search and opinion take?
Answer: The timeline for a professional prior art search and written opinion depends on the complexity of the technology and the breadth of the search required. For most technology areas a comprehensive search takes approximately one to two weeks and the written opinion follows within a week of completing the search. For highly complex inventions in densely patented technology areas — advanced semiconductor architectures, machine learning systems, specific medical device categories — thorough searching may take longer. For inventions requiring extensive technical literature searching beyond standard patent databases — physics research, biomedical engineering, chemical synthesis — additional time is needed to cover the relevant non-patent prior art sources. Ultimately, the amount of time required depends on the number of relevant references identified during the search. I discuss timeline expectations during your free consultation based on your specific technology.
Question: What happens if the patent search finds prior art that is very close to my invention?
Answer: Finding close prior art is not the end of the road — it is the beginning of a more informed strategic conversation. It is far better to discover it before filing than have an examiner cite it during prosecution, when your options are more constrained. When the search identifies close prior art I explain specifically what the prior art discloses, how it relates to your invention, and what aspects of your invention appear to be genuinely novel and non-obvious over the identified references. This assessment may lead to refining the claim strategy to focus on the most defensible distinctions, reconsidering the scope of protection that is realistically achievable, assessing whether a patent application is worth pursuing given the prior art landscape, or identifying that your invention is stronger in some aspects than others and focusing the application accordingly. Close prior art does not necessarily mean no protection is available — it means the claims need to be carefully crafted to capture the genuine inventive contribution that distinguishes your invention from what already exists.
Question: Should I tell you about prior art I already know about before the search?
Answer: Absolutely — and I specifically ask about prior art you are already aware of during our initial consultation. Several important reasons apply. First, your existing knowledge of the prior art in your technology area is valuable input that helps me understand where to focus the search and what terminology the relevant prior art uses. Second, you have a duty of candor obligation to the USPTO — known material prior art must be disclosed in an IDS during prosecution, so identifying it early helps ensure that obligation is satisfied properly. Third, understanding the prior art you already know about helps me draft claims that specifically distinguish your invention from those references — rather than discovering the closest prior art only after filing and then trying to amend claims reactively during examination.
Question: What does a professional patent search cost?
Answer: The cost of a professional prior art search and written opinion depends on the technology area and the scope of searching required. I provide transparent cost estimates during your free consultation based on your specific invention and technology area. The cost of a professional search is modest compared to the cost of a full patent application and the information it provides directly improves the quality of the subsequent application — making it one of the highest-return investments available in the patent prosecution process. The cost of not searching — discovering close prior art only after filing, when your ability to adapt your claim strategy is more limited — is almost always higher than the cost of the search itself.
Question: How do I read a patent and understand whether it is relevant prior art to my invention?
Answer: Reading a patent effectively for prior art purposes requires focusing primarily on the claims — not the abstract or the background section. The claims define what the patent actually protects. For prior art analysis purposes, the relevant question is whether any claim in the prior patent — or the disclosure in the specification, even outside the claims — describes your inventive concept. Prior art does not need to be claimed in an existing patent to anticipate your claims — a disclosure in a specification or drawing that clearly shows your invention can be prior art even if the prior patent's claims are directed at something entirely different. Understanding patent claim structure — independent claims, dependent claims, claim elements, and limitations — is essential for evaluating prior art relevance.
Question: What is the difference between a patentability search and a freedom to operate search — do I need both?
Answer: These are distinct analyses answering entirely different questions, and both are frequently needed. A patentability search asks: can I get a patent on this? It's conducted before filing, looking backward at prior art to assess novelty and non-obviousness. A freedom to operate search asks: can I commercialize this without infringing someone else's patent? It's conducted before product launch, looking at currently enforceable patents whose claims might cover your product — regardless of when they were filed. These questions are entirely independent: you can hold a valid patent on an improvement to a patented baseline technology while still infringing that baseline patent yourself. And an old patent — filed 18 years ago, say — might not be prior art against your new application at all, but could still create real infringement exposure if it's still in force with claims covering what you want to do. Both searches are typically warranted before significant investment: patentability before filing, FTO before launch. I advise on the right timing and sequencing for your specific situation.
[ Related Services ]
Patent search clients often also work with me on:
[Freedom to Operate Opinions] · [Provisional Patent Applications] · [Patent Validity & Invalidity Opinions] · [Utility Patent Applications] · [Non-Infringement Opinions]
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Patent Search and Patentability Opinion Services
Before investing in a patent application, understanding the prior art landscape is essential — and a professional prior art search provides the information you need to make that decision confidently.
I offer a free 30-minute phone consultation to discuss your invention, assess whether a patentability search makes sense for your situation, and explain what a professional search covers and what it costs.
My engineering background in laser lithography, optics, and semiconductor manufacturing, combined with a physics degree from UT Austin, means I approach prior art searches in technically complex fields the way an engineer would — recognizing relevant prior art that a purely legal analyst might miss. The result is a more accurate patentability opinion and more strategically informed claim drafting when you proceed with an application.
Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form.
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.