Austin Texas Patent Attorney — Practice Areas
The Law Office of Sean Christian Connolly provides comprehensive patent and intellectual property services for inventors, startups, and corporate IP teams across Austin, Central Texas, and throughout the United States.
With a physics degree from the University of Texas at Austin, over seven years as a semiconductor manufacturing process engineer specializing in laser lithography, optics experience, Unix certification, and over 17 years of patent prosecution as a USPTO-registered patent attorney— this practice combines the technical depth of an engineer with the legal expertise of an experienced patent attorney.
Every service listed below is delivered personally by Sean Christian Connolly — not delegated to associates or paralegals. Browse by service category or contact us for a free 30-minute phone consultation to discuss your specific IP needs.
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Austin's technology economy — spanning semiconductor fabrication along the 183 corridor, software and AI development at the Domain and downtown, health technology innovation at UT Dell Medical School, and research spinouts from UT Austin's engineering programs — produces exactly the kind of technically sophisticated patent work that requires a practitioner with genuine engineering depth. Every practice area below reflects 17 years of USPTO prosecution experience, a physics degree from UT Austin, and seven years of semiconductor engineering — applied to the full range of patent and IP needs that Austin's innovation community produces.
[ Boutique Patent Services ]
The Law Office of Sean Christian Connolly provides boutique patent services with a level of technical depth that large firms cannot match and a personal commitment that high-volume patent mills do not offer. With a physics degree from the University of Texas at Austin, seven years of semiconductor engineering experience including laser lithography, optics background, and 17 years of USPTO prosecution, every client works directly with an attorney who genuinely understands what they have built — not a paralegal or junior associate. This is patent law practiced the way it should be: technically sophisticated, strategically informed, and personally delivered.
SOFTWARE & AI PATENTS
From machine learning systems and algorithms to SaaS platforms and AI models. I help tech companies protect software innovations that hold up to USPTO scrutiny under the current Alice/Mayo framework.
MEDICAL DEVICE & BIOTECH PATENTS
High-stakes, highly regulated, requiring exacting technical precision. I have extensive experience with advanced medical patents where claim language directly determines portfolio value.
Protecting your invention in global markets through the Patent Cooperation Treaty. I guide inventors, startups, and corporate IP teams through PCT international filings, preserving your rights in over 150 countries while you assess the best markets for your technology.
INTERNATIONAL PATENTS (PCT)
SEMICONDUCTOR & ELECTRONICS PATENTS
With over 7 years of semiconductor engineering experience, I understand chip architecture, circuit design, and hardware innovation at a level most patent attorneys cannot match.
MECHANICAL & GENERAL PATENTS
From individual inventors with novel mechanical ideas to companies protecting core process innovations. Same rigorous technical analysis applied to every invention.
[ Core Patent Services ]
From the first prior art search through provisional filing, non-provisional prosecution, and patent grant — I handle every stage of the US patent process for inventors, startups, and corporate IP teams across Austin and Central Texas. My engineering background in semiconductor manufacturing and optics, combined with 17 years of USPTO prosecution experience, means the patents I draft are technically precise, strategically sound, and built to provide real competitive protection across software, AI, semiconductor, medical device, mechanical, and optical technology areas.
PATENT SEARCH & PATENTABILITY OPINION
A comprehensive prior art search and written patentability opinion before you file — identifying potential obstacles, informing claim strategy, and giving you an informed basis for deciding whether to invest in a full application.
A well-drafted provisional establishes your priority date immediately, gives you twelve months of patent pending status, and costs significantly less than a full application. Filed with the technical depth needed to support the broad claims you will want in your non-provisional.
PROVISIONAL PATENT APPLICATIONS
The most powerful form of US patent protection — giving you exclusive rights to make, use, sell, and license your invention for up to twenty years. Drafted with the engineering-level technical understanding that produces stronger claims and better protection.
UTILITY PATENT APPLICATIONS
Protecting the unique visual appearance of your product — including user interface designs, product form factors, and graphical icons. Design patents are faster and less expensive than utility patents and provide valuable complementary protection for distinctive product designs.
DESIGN PATENT APPLICATIONS
INTERNATIONAL PATENT APPLICATIONS
Protecting your invention in global markets through the Patent Cooperation Treaty. I guide inventors, startups, and corporate IP teams through PCT international filings, preserving your rights in over 150 countries while you assess the best markets for your technology.
[ Additional Patent Services ]
Beyond the core patent filing process, a comprehensive patent strategy requires ongoing prosecution management, continuation planning, and portfolio development. These services extend and strengthen the protection established by your initial filings — ensuring your patent portfolio grows with your technology and your business rather than becoming obsolete as both evolve. I advise clients on continuation strategy from the very first application, building patent portfolios that compound in value over time.
PATENT PROSECUTION & USPTO PRACTICE
PATENT PORTFOLIO MANAGEMENT
Managing your patent application through the USPTO examination process — from initial filing through office action responses, examiner interviews, and patent grant. Seventeen years of technically sophisticated prosecution across semiconductor, software, medical device, and mechanical technology areas.
Received a USPTO Office Action? A technically precise response that preserves maximum claim scope is critical. I draft office action responses that engage examiners at an engineering level — and I handle responses for applications filed by other attorneys.
RESPONDING TO OFFICE ACTIONS
A strategic approach to building, maintaining, and maximizing the value of your patent portfolio over time. I help inventors and companies decide what to file, what to maintain, what to abandon, and how to align patent strategy with business goals — proactively managing your IP assets rather than reacting to individual filings.
CONTINUATION PATENT APPLICATIONS
CONTINUATION-IN-PART PATENT APPLICATIONS
A continuation application lets you pursue additional or broader claims based on your original patent application while it is still pending — without losing your original filing date. I plan continuation strategy from the very first filing, drafting original specifications comprehensive enough to support the future claims you will want to pursue as your product evolves and your competitive landscape becomes clearer.
A continuation-in-part (CIP) application allows you to add new subject matter to a pending patent application while retaining the original filing date for previously disclosed material. CIPs are particularly valuable when your invention has evolved significantly since the original filing — incorporating new technical developments while maintaining priority for the original innovation. I advise clients on when a CIP is the right strategic choice versus a new standalone application.
[ IP Opinions & Analysis ]
Informed IP decisions require technically rigorous legal analysis — not just legal opinion divorced from engineering reality. My physics degree, laser lithography engineering background, and optics experience make the opinions I provide in technically complex fields significantly more accurate and actionable than purely legal analysis. Whether you need to know whether a competitor's patent is valid, whether your product infringes a third-party patent, or what your IP portfolio is worth — the answer requires an attorney who understands the technology as well as the law.
PATENT VALIDITY & INVALIDITY OPINIONS
IP DUE DILIGENCE
A written legal analysis assessing whether an issued patent is likely valid or vulnerable to challenge based on prior art and other statutory requirements. Invalidity opinions are critical when a competitor asserts a patent against you — understanding the patent's weaknesses informs your response strategy, licensing negotiations, and litigation decisions. Validity opinions help patent holders understand how defensible their granted patents are before asserting or licensing them.
Comprehensive review and analysis of a company's intellectual property assets in connection with an investment, acquisition, or merger. I assess patent portfolio strength, identify gaps and risks, evaluate prosecution history for potential claim scope issues, and provide investors and acquirers with a clear picture of the IP assets they are evaluating. My engineering background makes IP due diligence in technically complex fields — semiconductor, software, medical device, optics — more accurate and more actionable than purely legal review.
FREEDOM TO OPERATE OPINIONS
Before you launch a product or commercialize a technology, a freedom to operate opinion tells you whether your activities infringe third-party patents. My engineering background makes FTO analysis in technically complex fields — semiconductor, optics, software, medical devices — more accurate and more actionable.
Determining the economic value of a patent or patent portfolio for licensing negotiations, investment, acquisition, litigation damages, or tax purposes. Patent valuation considers claim scope and strength, remaining patent term, technology relevance, licensing history, and the competitive landscape. I provide patent valuation analysis grounded in both legal assessment of claim strength and genuine technical understanding of the technology's commercial significance — an important combination that purely financial valuations often miss.
PATENT VALUATION
A written legal analysis concluding that a specific product, process, or technology does not infringe a particular patent or set of patents. Non-infringement opinions are valuable when a competitor asserts infringement claims, when you want to proceed with a product launch despite a potentially relevant competitor patent, or when a business partner or investor requires confirmation of non-infringement as part of a transaction. Like freedom to operate opinions, a good-faith non-infringement opinion can also mitigate enhanced damages in litigation by demonstrating that you acted in reasonable reliance on competent legal advice.
NON-INFRINGEMENT OPINIONS
[ Agreements & Transactions ]
A patent is only as valuable as the agreements that surround it. License agreements that generate revenue, assignment agreements that properly transfer ownership, joint development agreements that protect your rights in collaborative work, and non-disclosure agreements that preserve your patent rights before you file — these are the transactional instruments that turn IP assets into business value. I draft and negotiate the full range of IP agreements with both the legal precision and the technical understanding needed to protect your interests accurately in every business relationship.
IP ASSIGNMENT AGREEMENTS
A patent assignment transfers ownership of a patent or patent application entirely — the assignee becomes the new owner with full rights to enforce, license, and sell the patent. I draft and review IP assignment agreements for inventors selling or transferring their patents, companies acquiring patent assets, employee and contractor IP assignment agreements ensuring company ownership of work-product inventions, and university or research institution technology transfer transactions. Every startup should have properly executed IP assignment agreements with all founders, employees, and contractors from day one — gaps in assignment chains are one of the most common and damaging IP problems discovered during due diligence.
PATENT LICENSING AGREEMENTS
NON-DISCLOSURE AGREEMENTS (NDAS)
A granted patent only creates value when you enforce or license it. I draft and negotiate patent license agreements, royalty structures, and IP assignment agreements — turning your patent portfolio into revenue.
Before sharing your invention with anyone — an investor, manufacturer, or business partner — a properly drafted NDA protects your confidential information and preserves your international patent rights. I draft and review NDAs with your broader patent strategy in mind.
JOINT DEVELOPMENT AGREEMENTS
IP AGREEMENTS & CONTRACTS
When two or more parties collaborate on developing new technology, a joint development agreement (JDA) establishes upfront who owns the resulting intellectual property, how costs and revenues are shared, what each party can do with jointly developed IP, and how the relationship is structured and terminated. Getting these terms right before collaboration begins is critical — disputes over IP ownership in joint development relationships are common, expensive, and often avoidable with a properly drafted agreement. I draft JDAs with particular attention to patent ownership and licensing provisions, ensuring that your IP rights in jointly developed technology are clearly defined and protected.
Beyond patents, trademarks, and copyrights, a comprehensive IP strategy requires a suite of supporting agreements that protect your intellectual property in every business relationship. I draft and review the full range of IP-related contracts including technology license agreements, software as a service agreements with IP provisions, IP indemnification agreements, research and development agreements, materials transfer agreements, and vendor and supplier agreements with confidentiality and IP ownership provisions. As a patent attorney with genuine engineering experience I understand both the legal framework and the technical substance of these agreements — producing contracts that protect your IP interests accurately and comprehensively rather than relying on generic templates that may not address the specific technical dimensions of your situation.
[ Additional IP Services ]
Comprehensive intellectual property protection goes beyond patents. Trademarks protect the brand identity that makes your company recognizable in the marketplace. Copyrights protect the creative and technical expression that makes your products distinctive. Trade secrets protect the confidential innovations that are more valuable kept secret than disclosed in a patent. I provide trademark registration, copyright protection, and trade secret strategy as part of a fully integrated IP approach — ensuring every dimension of your intellectual property is protected, not just the inventions that qualify for patents.
Federal trademark registration protects your brand name, logo, and identifiers — giving you nationwide rights and the legal standing to stop infringers. I handle trademark clearance searches, USPTO applications, and trademark prosecution alongside your patent strategy.
TRADEMARK SERVICES
Copyright protection for software code, technical documentation, creative works, and digital content. Federal registration is required before filing an infringement lawsuit and enables recovery of statutory damages. I handle copyright registration as part of comprehensive IP portfolio strategy.
COPYRIGHT SERVICES
Not every valuable innovation should be patented. Trade secrets — confidential business information that derives value from remaining secret — can provide indefinite protection for processes, formulas, algorithms, and methods that are difficult for competitors to reverse engineer. I advise inventors and companies on when trade secret protection is the right strategic choice versus patent protection, and help implement the confidentiality policies, employee agreements, and operational practices needed to maintain enforceable trade secret status under the Defend Trade Secrets Act.
TRADE SECRET PROTECTION
[ Business Services ]
Strong IP protection begins before your first patent application is filed — with the right business structure, the right agreements in place, and a clear strategic roadmap for building IP assets that support your business goals. I work with Austin inventors and startups at the earliest stages to establish the legal and strategic foundation for a strong IP portfolio — from choosing the right entity structure to own your IP, to mapping a patent filing strategy aligned with your fundraising timeline, to providing ongoing fractional IP counsel that gives growing companies access to experienced patent strategy without the cost of a full-time hire.
IP-FOCUSED BUSINESS FORMATION
STARTUP IP STRATEGY CONSULTATION
The legal structure you choose for your business determines who owns your intellectual property, how it is taxed, and how it can be transferred or licensed. I help inventors and startup founders choose the right entity structure — LLC, C-corporation, or S-corporation — with IP ownership and future investment in mind. Proper IP assignment from founders to the company entity, correctly structured from day one, prevents the costly ownership disputes and due diligence problems that derail funding rounds and acquisitions. I combine patent attorney expertise with business formation guidance to ensure your company is built on a solid IP foundation from the start.
For early-stage founders who need strategic IP guidance before they know exactly what to file — a focused consultation that maps your current technology, competitive landscape, and business goals to a practical IP roadmap. I help Austin startups answer the foundational questions: What is worth patenting? When should we file? How do we build a portfolio that supports fundraising? How do we protect our technology without spending our entire legal budget before product launch? My engineering background means I understand what you are building at a technical level — which makes the strategic advice I give significantly more actionable than purely legal IP counsel.
Faculty researchers, graduate students, and staff at UT Austin, UT Dell Medical School, and other Texas research institutions regularly develop patentable innovations in the course of their research. Navigating the intersection of university IP policies, technology transfer office processes, and personal IP rights requires specialized knowledge. I work with university researchers and spinout companies to protect innovations emerging from academic research — from initial invention disclosure through patent prosecution and commercialization. My UT Austin physics background gives me a particular connection to and understanding of the university research environment and the technically sophisticated inventions it produces.
UNIVERSITY & RESEARCH INSTITUTION IP
[ Specialized Services ]
Some of the most valuable IP work happens outside the standard patent prosecution pathway — in university technology transfer, international patent strategy, inter partes review proceedings, and foreign applicant US filings. My technical background makes me particularly well-suited for these specialized engagements. A physics degree from UT Austin and hands-on semiconductor engineering experience give me credibility and effectiveness in technically demanding proceedings before the USPTO and in coordination with international patent counsel. Whether you are a UT Austin researcher commercializing a discovery, a foreign company seeking US patent protection, or a company defending your patents before the Patent Trial and Appeal Board — I bring the technical depth and legal experience these specialized matters require.
OF COUNSEL SERVICES FOR LAW FIRMS
USPTO-registered patent counsel available for of counsel arrangements with Texas law firms. Seventeen years of prosecution experience and a rare engineering background in laser lithography, optics, and physics make me particularly valuable for firms with clients in technically sophisticated industries.
USPTO FILING FOR FOREIGN APPLICANTS
FRACTIONAL IP COUNSEL
Foreign inventors and international law firms seeking US patent protection need a technically experienced USPTO-registered attorney. I work directly with foreign inventors and as US correspondent counsel for international law firms — handling US prosecution from filing through grant.
Ongoing patent strategy and portfolio management for Austin startups and growing companies — without the cost of a full-time in-house hire. Get the strategic benefit of an experienced in-house patent attorney at a fraction of the cost, with the technical depth to understand what you are building.
INTERNATIONAL PATENT STRATEGY (PCT)
INTER PARTES REVIEW (IPR) SUPPORT
A US patent protects your invention only within US borders. For inventions with global commercial applications, a coordinated international patent strategy — combining PCT filings, regional patent office applications, and targeted national phase entries — is essential for meaningful worldwide protection. I help Austin companies think strategically about international patent protection: which markets matter most for their technology, how to sequence international filings efficiently, how to manage the significant costs of multinational prosecution, and how to coordinate US and international prosecution for a coherent global portfolio. My experience with technically complex inventions in semiconductor, optics, software, and medical device fields informs the strategic advice I provide on international patent portfolios in these areas.
Inter partes review is a USPTO trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) in which a third party challenges the validity of an issued patent based on prior art. IPR has become one of the most powerful tools for invalidating competitor patents and one of the most significant threats facing patent holders. I provide IPR support for both petitioners challenging patents and patent owners defending their patents before the PTAB — including prior art analysis, claim mapping, declaration preparation, and strategic counsel on whether to file or settle. My engineering background is particularly valuable in technically complex IPR proceedings where claim construction and prior art analysis require genuine technical understanding.
[ Common Questions ]
Question: What types of patents do you handle?
Answer: I handle the full spectrum of patent work — provisional and non-provisional utility patents, design patents, continuation applications, and PCT international filings — across software and AI, semiconductor and electronics, medical device and biotech, optical and photonic technologies, and mechanical and general inventions.
Question: Do you work with individual inventors or only companies?
Question: What makes your patent practice different from larger Austin IP firms?
Answer: Both. A significant portion of my practice serves individual inventors — people with a genuine novel idea who need experienced professional guidance through the patent process. I bring the same technical rigor and personal attention to individual inventor clients as I do to corporate IP teams.
Answer: Three things. First, genuine technical depth — a physics degree from UT Austin, seven years as a semiconductor manufacturing process engineer specializing in laser lithography, and optics experience that most patent attorneys simply cannot match. Second, direct personal service — every client works with me, not a junior associate. Third, comprehensive full-service IP coverage across every patent and IP need a startup or inventor might have.
Question: Do you offer ongoing IP strategy or only individual patent filings?
Answer: Both. For companies that want ongoing strategic guidance without the cost of a full-time hire, I offer fractional IP counsel — a defined monthly engagement covering patent portfolio management, invention review, competitive monitoring, and IP strategy integrated with your business roadmap.
Answer: Schedule a free 30-minute phone consultation. Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or use the contact form below. Consultations are available Monday through Friday, 1:00pm to 4:00pm Central Time. All consultations are confidential under attorney-client privilege.
Question: How do I get started?
Question: How do I know which practice area page describes the service I actually need?
Answer: Most patent and IP needs fit clearly into one practice area — a software startup needs software patent prosecution, a medical device company needs medical device patent prosecution. But many clients have overlapping needs that span multiple areas — a startup needs both provisional patent applications and IP-focused business formation; an established company needs both patent portfolio management and freedom to operate opinions. The best way to identify exactly what you need is through a free 30-minute consultation where I assess your specific situation across all relevant practice areas and recommend the specific combination of services that addresses your actual IP needs rather than picking one page from a menu.
Question: Do you charge different rates for different practice areas?
Answer: My rates vary based on the complexity of the specific matter rather than the practice area category. Semiconductor circuit architecture patent applications involve more technical prior art searching and more complex claim drafting than some mechanical applications — and the fee reflects that complexity difference. For every engagement I provide a transparent cost estimate during the free consultation before any work begins, so you understand the expected investment before committing. USPTO government fees are separate from attorney fees and I itemize both clearly so there are no billing surprises.
Answer: Software and AI patent prosecution generates the highest volume of new client inquiries from Austin's technology community — reflecting the density of software, SaaS, fintech, and AI companies operating here. Semiconductor and electronics patent work is the area where my engineering background provides the most distinctive value — and Austin's growing semiconductor ecosystem, anchored by Samsung Austin Semiconductor and a growing community of fabless design companies, generates significant activity. PCT international patent strategy is increasingly in demand as Austin companies expand their commercial footprint internationally. And startup IP strategy consultation is a consistent need across every technology sector as Austin's venture capital community has grown and the IP diligence expectations of Austin investors have matured.
Question: Which of your practice areas are most in demand from Austin clients specifically?
Question: Can the Law Office of Sean Christian Connolly handle all of my company's patent and IP needs or do I need multiple firms?
Answer: For most Austin technology companies at seed through Series B stage, I handle the full range of patent and IP needs — patent prosecution, IP agreements, trademark registration, copyright registration, trade secret protection, IP due diligence, and IP strategy — as a single point of contact. For patent litigation — enforcement lawsuits in federal district court or PTAB proceedings requiring full litigation team support — I work as of counsel alongside qualified litigation firms who handle the courtroom work while I provide technical support and prosecution history expertise. I am transparent about the boundaries of my practice so clients always have accurate expectations about what I handle directly and where coordination with litigation counsel is appropriate.
Question: How does the Law Office of Sean Christian Connolly stay current with the rapid changes in patent law affecting Austin technology companies?
Answer: Staying current requires active engagement with both the legal and technical dimensions of patent practice simultaneously — which is one reason the engineering background matters beyond initial credentialing. I regularly follow Federal Circuit and PTAB decisions affecting prosecution strategy, track USPTO examination guideline updates including the evolving AI and software examination guidance, monitor significant patent litigation in Austin's Western District of Texas affecting the technology areas my clients work in, and follow technical developments in semiconductor, AI, and medical device fields that affect the prior art landscape and claim drafting strategy. For Austin clients in rapidly evolving technology areas — generative AI, advanced semiconductor packaging, medical AI — this combined legal and technical currency directly affects the quality of the prosecution and strategy advice I provide.