Month: January 2023

Electrical and software inventions and innovations are embedded all around us, powering critical tools for everyday life, in our homes and offices, our entertainment and communication devices, and the cars, trucks, buses, planes and trains we travel in.

So it makes sense that nearly half of the Hanley Flight & Zimmerman patent prosecution team is devoted to the electrical and software space.

HFZ’s Electrical and Software group includes nearly two dozen patent attorneys, agents and engineers. The professionals in this group have practical experience as engineers in industry, some with inventions and patents of their own, as well as university-level research.

One of the leaders of the group is Mark Hanley, one of HFZ’s three founding members. Before becoming a patent attorney, he was an electrical engineer for more than a decade, specializing in switching power supplies, analog circuitry, and a variety of pressure, temperature, and position transducers. He also was an inventor on several patents relating to piezoelectric biomorphs.

“We have quite a concentration of electrical and software practitioners,” Mark says of his team. “This practice group can handle a wide variety of technology.”

The variety of work that electrical and software patent clients send to HFZ is a reason he and the HFZ team enjoy working here.

“It’s not just chips, chips and chips. It’s a mix of things,” Mark says. “We have a number of other clients so there’s always a mix of work coming in.”

Not that HFZ doesn’t work with chips. The Electrical and Software group regularly handles patents involving semiconductors used in communications devices and power management for laptops and mobile devices, as well as integrated circuitry and processor architecture.

In addition to core electrical clients, the firm has clients in other fields that innovate in the electrical space. For example, HFZ’s software clients include McAfee, VMWare, and others.

Other well-known companies such as Boeing, Ford, and GE trust HFZ with their patent needs, and their innovations often cross disciplines.

“When a company sends you a new product, or an invention disclosure associated with a new product, it’s not surprising that it’s multidisciplinary,” Mark says.

“The person handling that invention disclosure and preparing the patent application has to understand mechanical, electrical and software aspects of that product. And we’re working with a lot of clients that are leading in many areas right now.

“Our clients are discerning buyers. They can pick and choose who they work with, and they know what good work looks like. They’re obviously very patent savvy.”

While HFZ’s patent practice is focused on prosecution and counseling, the firm’s attorneys have experience in litigation as well as post-grant proceedings at the U.S. Patent and Trademark Office. At the heart of HFZ’s philosophy is to draft patents that will withstand challenges.

“The clients give us great feedback. They’re very happy with our work,” he said. “I’m pretty proud to hear things from some of these bigger companies, like ‘You’re our favorite prosecution firm in the country.’”

Serious, flexible and determined are three words Mark uses to describe working in HFZ’s Electrical and Software group.

“We’re serious about the work,” he says. “But we’re very flexible toward individuals and what’s happening with them personally. And we are determined to make it work for our clients. We don’t give up and we achieve successful outcomes for our clients.”

Deciding whether to change law firms mid-career can be a difficult choice for patent attorneys. While lawyers may have built up a book of business and close acquaintances at one firm, those comforts can be outweighed by the potential for growth and culture of cooperation that a new firm can offer.

When Chris George decided to join Hanley Flight & Zimmerman nearly 15 years ago, it was his first job change as a professional. He started as a patent engineer at his previous law firm and had been there since before he started law school, working his way up to associate attorney and then partner.

And while he felt like he was making a leap after working at one place for so long, he was drawn to HFZ’s structure as a prosecution-focused patent law firm and the collaboration he’d receive from the team to fulfill his goals.

“It was really attractive to me as an opportunity to grow my prosecution practice and get support on the prosecution side without having to compete with litigators for resources,” he said.

“This path that I found myself interested in was the path that these folks were on as well.

“I’ve been at HFZ for about 14 years and it’s been going really, really well. My hunch at the beginning has turned out to be true.”

Only a few days into his transition to the new role at HFZ, Chris knew he was in the right place when he saw the team jump into action to help him.

Chris says he got a call from a former client and had to explain he wasn’t working at his old firm when they said, ‘Oh, well, can we visit you and meet your new partners?”

HFZ got Chris and the client tickets to a Cubs game and dinner reservations.

“I’ve been there for a couple of days, and they’re making arrangements to meet these folks from out of town,” he said. “They ended up doing business with us.”

Chris says the team of patent engineers, patent agents and associates is another reason why he made a lateral move to HFZ – and why other patent prosecutors should consider the firm as a landing place to grow their career. He likes that there are no silos – no partners who have their dedicated group of associates who can’t work with anyone else.

“You don’t have that period. You work with everybody,” he says. “And it’s nice to leverage the expertise that everybody brings to the table in different circumstances with different subject matter.

“Everybody is trying to do the best job at prosecution and counseling that we can do. Work comes in and it gets allocated, and somebody’s on top of it right away. And we’re very collaborative about going back and forth and reviewing each other’s work and making sure that we’re getting the best work product out the door that we can get.

“We’re in that sweet spot of having a very diversified and strong team, but not too large. You still know everybody that walks down the hall. You can count on everybody.”

Chris says that “count on everybody” feeling extends to the partners and founders too.

“In general, patent attorneys are highly educated – engineers and lawyers, right? – and that has a tendency to draw some big egos. But we’ve done a very good job of maintaining a very flat structure,” he says. “And if the newest patent engineer wants to knock on Mark Zimmerman’s door, or my door, It’s ‘Come on in, let’s have a conversation.’ It’s not, ‘OK, please talk to my assistant and schedule an appointment.’

“There aren’t layers of bureaucracy that you find at some other places. It’s a very open, approachable atmosphere. We’re all here to get the job done and do the best work that we can for our clients, and we all love learning about technology and love the law. And I think that makes it a very, very nice environment to come to work and be part of.”