Month: February 2023

Hanley Flight & Zimmerman is dedicated to securing the best possible patent protection for its clients.

One of the ways HFZ achieves that goal is by drafting forward-looking patent applications that will withstand potential litigation and protect clients from competitors.

This strategy is instilled into everyone at the firm who works on a patent application, from paralegals and assistants, to patent engineers and agents, and up to the patent attorneys.

“No matter who is handling a case at our firm, the client will get the same result: A high-quality patent that is assertable and defensible,” said Felipe Hernandez, an HFZ attorney who has been with the firm since 2003.

He explained how HFZ’s attorneys add layers of protection to their clients’ patent applications in three ways.

• They have the expertise and technical knowledge to identify multiple innovations in a single invention disclosure, protecting against derivative products that may be developed by competitors.
• They thoughtfully write patent applications so that they are easily understood by a judge and jury and so that litigators have ammunition to defend the patents being challenged.
• They argue with care, precision, and persuasiveness: Carefully craft statements before the U.S. Patent and Trademark Office that will contribute positively to a patent’s enforceability.

Keeping competitors at bay

The process starts with HFZ reviewing a client’s invention disclosure.

“One of the values that we bring to our clients is being able to identify not only an invention, but sometimes there are multiple inventions. And the inventor just doesn’t realize it,” Felipe said.

“And so we explain to the client that this is a single disclosure form, but actually you have a number of valuable innovations here.”

It could be advantageous for a company to patent specific pieces of a system as well as the group as a whole because HFZ’s attorneys, with their experience and foresight, could see individual pieces of the invention being developed by a competitor in the future.

“For the inventor, they think they’ve created a three-tiered system with Blocks A, B, and C forming a superblock, but as a patent attorney, I could see where a competitor might only develop Block B without the superblock and without Block C,” Felipe said. “And so why don’t we write some claims that our client can use to protect just Block B by itself?”

This strategy is also valuable for future litigation. If a client sees a competitor has developed Block B but the client only patented the system as a whole, there may be little, if any, recourse.

“Let’s give them the broadest protection that they can use,” Felipe said. “If you understand the market is going in a certain direction, we can work with inventors to make sure the resulting patent application covers future innovations.”

Telling an invention’s story

HFZ’s attorneys speak to multiple audiences in patent applications. They fulfill the client’s needs: choosing the right words to specifically describe their invention to explain it to the public, how the technology may be used in the real world in alignment with various business strategies, why the invention is non-obvious, and why the application complies with all aspects of the law and should be approved by the USPTO.

But the patent application is also drafted to speak to critical audiences if the patent is enforced in court: The judge and jury. This is how HFZ makes patents litigation-ready.

“We draft patent applications so that they tell a story no matter the level of the reader’s technical background,” Felipe said, using the example of a smartphone innovation.

“If a patent makes it to trial, you want to give the trial attorney the ability to hold up a phone and say this invention is within the phone. And when the jury looks at the patent application that’s been written up, they understand what the invention is about.

“Here’s the overarching story, the scope or the context of the invention, then we start focusing on more granular details. Maybe the innovation conserves battery power, decreases processing resources, or improves other functionality of particular components.”

Arguing with a purpose

Just as HFZ takes care to write patent applications, they are mindful of how they speak to the patent examiner when arguing for approval during the patent procurement phase.

“The job of the examiners at the USPTO is to protect the public from patents that are too broad. Our job is to protect our clients’ rights to get patent protection that’s sufficiently broad, which goes right up to the prior art line,” Felipe said.

“Here’s the prior art. Here’s our client’s invention. If we can close that gap and you can see no light between, then we’ve done a great job for our client.”

But there’s a delicate balance. If a prosecuting attorney unartfully characterizes the focus of the invention to the examiner, that could be used during litigation to narrow the scope of patent protection beyond what is required to distinguish the prior art. If the prosecuting attorney doesn’t argue strongly enough, some aspects of the innovation might not get approved by the patent examiner and the scope of protection will be lessened.

How HFZ can protect your innovations

Felipe says clients put their full trust in HFZ after seeing the firm’s patent procurement process in motion.

“After working with us, they bring us closer into their operation because they see the quality in the work we provide,” he said. “It’s a rewarding feeling to earn that trust from our clients.”

The biomedical practice group at Hanley Flight & Zimmerman helps protect innovations in medical devices that are very important in everybody’s life, and increasingly more so.

A genre of technology that was once in the realm of laboratories and clinic settings is more likely to be in the hands of consumers. Quite literally. How many at-home Covid tests have you taken? Have you read a diagnostic test result on an app on your phone? Are you wearing a fitness tracker?

Large healthcare companies, including HFZ biomedical clients such as Abbott Laboratories and GE HealthCare, exhibit at CES, one of the largest consumer electronics trade shows in the world. HFZ’s biomedical expertise dovetails with our electrical and software practices to help our clients protect innovations in these exciting areas as more medical devices become consumer goods.

“I love working with our clients in the medical field,” said Joe Jasper, an HFZ attorney and one of the leaders of the biomedical practice group. “Some have consolidated work from other firms with us, which is confirmation that the feeling is mutual.”

In addition to consumer-facing devices, biomedical innovations also involve back-end analytics, such as applying machine learning models to data to predict patient conditions, patient outcomes, and develop treatment plans. In this space, data privacy is a key concern, as companies try to customize solutions to a particular patient and also leverage a large body of anonymized data to train artificial intelligence models. Innovations in this space balance maintaining the privacy of the individual with the benefit gained from analyzing a larger pool of data.

HFZ’s practitioners in the biomedical practice group include attorneys and professionals with degrees in biomedical engineering with an emphasis in electrical engineering, mechanical engineering, and bioinformatics. We also have practitioners with advanced technical degrees.

This multidisciplinary team brings a lot of value to biomedical patent applications, whether the innovation is for a laboratory, a clinical or point-of-care setting, or a consumer good. While some aspects of an invention focus on biomedical or healthcare principles, other aspects involve data analytics and software. Some inventions involve control of hardware as well. Having a multidisciplinary team of biomedical, software, and electrical engineers helps us to evaluate, describe, and protect all aspects of our clients’ biomedical and healthcare innovations.

“Our clients appreciate that HFZ is in tune with the latest practices in healthcare as well as in electromechanical hardware, software, and data analytics,” said Chris George, HFZ attorney and one of the leaders of the biomedical practice group. ”We can appreciate the many different, and sometimes opposing, concerns and challenges that go into these types of patent applications, and we strategically craft patent applications that survive examination and become assets for strategic use in licensing, joint ventures, and litigation.”

Given the nature of the technology and its target customers, biomedical patent applications face challenges from a statutory subject matter perspective as well as from a strategic value perspective, given that these technologies are often very personal and patient-centric in nature. These innovations may also guide the workflow of a human clinician. Having a software and computing background, and being able to understand the underlying principles of the technology as well as how to protect its personal nature, gives HFZ an advantage to strategically advise and obtain patent protection for our clients.

In this area, as well as with other technologies, HFZ provides clients with a high level of engagement to learn their businesses as well as their technologies and become familiar with the competitive landscape so that we can strategically prepare and prosecute patent applications into useful patent assets. We get to know patent examiners through interviews and USPTO-industry partnership meetings so that we have a productive dialog during examination. This engagement and context helps us to obtain patents that are robust and relevant and can be leveraged by the client.

“The biomedical space, and the broader healthcare realm, are intensely competitive and impact our lives and the lives of the people around us in ways that many other technologies do not,” Chris said. “At HFZ, we take that responsibility very seriously.”

Marianne Buckley has been a patent attorney at Hanley Flight & Zimmerman for the past 10 years, preparing and prosecuting U.S. and foreign patent applications in the mechanical and electro-mechanical arts.

She enjoys working with a wide variety of technologies, including medical devices, electronic user devices, automotive vehicles, aircraft, child care products, information and process management systems, and others.

“I feel lucky to be at a firm that prioritizes the quality and value of the patents we obtain for our clients,” she said.

We spent some time with Marianne to ask about how HFZ delivers best-in-class results for its clients, what it’s like to work there and why she chose patent law as a career.

Why did you become interested in patent law?

Marianne was a biomedical engineering major in college, where she worked in a research lab and enjoyed learning about new developments in the field of biomechanics. She pursued patent law as a way to combine her interests in engineering and technical writing. That path eventually led her to HFZ.

“I was attracted to HFZ because of its nature as a patent prosecution boutique,” Marianne said. “We can focus on developing skills and best practices in this area of patent law to obtain high quality patents for our clients.”

How did you get your start in the intellectual property field?

After college, Marianne worked for a company that developed software for healthcare data analytics software, exposing her to an environment that encouraged innovation.

Then during law school, Marianne interned in the general counsel’s office at the American Medical Association, which introduced her to the role of in-house counsel in protecting and advancing the interests of an organization, including intellectual property.

“That experience helped me appreciate that the work we do at HFZ contributes to our clients’ broader business goals,” she said. “Each patent we obtain is valuable not only on its own, but as a block in our clients’ patent portfolios to help our clients protect and advance their investments.”

What is special about HFZ’s patent prosecution philosophy?

“We are thoughtful about obtaining valuable patents for our clients,” Marianne said. “We consider each case from several angles—as an opportunity to protect innovation, as a strategic tool for our clients in a competitive landscape, and as a legal asset that will withstand challenges.

“When working with inventors to draft new patent applications, we consider how the technology may evolve in the future. As a result, the patent applications we prepare serve as living documents that remain relevant as the technology advances over time.

“This multi-faceted, forward-thinking approach to patent prosecution sets us apart.”

What is HFZ’s mentorship program like? How has it been rewarding for you?

“The program doesn’t just last for a few months or a year, but rather is directed toward establishing a long-term career path with us,” Marianne said. “As a result, it is rewarding to see our mentees grow and progress, managing their workloads and taking on responsibilities across the firm.”

How does HFZ create a culture that allows for work/life balance?

“HFZ is not just a collection of individual attorneys but rather a team that works together to help our clients,” she said. “This team-based approach carries over into how we work with each other.

“Rather than taking a siloed approach to operating the firm, we regularly evaluate workload distribution and management across the firm and create a culture in which everyone is a team player to help not only our clients, but each other.”

Joe Jasper will mark two decades as an attorney at Hanley Flight & Zimmerman this summer. His practice focuses on patent procurement and product clearance, helping tech companies protect their innovations and mitigate risk as they introduce new products.

“Our client roster is top notch,” he said. “Some of the biggest names in tech look to HFZ.”

We sat down with Joe to ask him about why he chose patent law as a career, his dedication to his clients, what makes HFZ a special place to work, and more.

What drew you to patent law, and then to HFZ?

Like many HFZ employees, Joe started in engineering before pivoting to law school. He majored in biomedical engineering to continue learning about life sciences.

“Engineering is challenging, respected, and rewarding,” Joe said. “There is a sense of accomplishment when you work through something technologically complex.”

But as Joe progressed through engineering school, he realized he enjoyed the writing aspects of his classes more than the lab side. To build on his technical background and incorporate more writing, he decided to go to law school with the intent of becoming a patent attorney.

After law school, he had a panel interview for a job with HFZ.

“I initially thought that I was walking into what would be a terrifying experience – you know, with three attorneys questioning you from across the table. But instead of a deposition-like interrogation, it was the best interview I had,” Joe said. “It was a comfortable, naturally flowing conversation, which happens when you vibe with people.

“That said everything I needed to know about working at HFZ.”

HFZ’s goal is to give its clients the best possible patent protection; can you give an example of how this is accomplished?

To answer this question, Joe referenced a scene from the TV drama “Ozark” in which the lead character, Marty Byrde, has a conversation with an attorney.

Marty says “I’m an accountant, I move numbers around,” and she retorts with “I’m a lawyer, I move words around.”

“That scene resonated because every word matters in patent prosecution,” Joe said. “I’ve had long conversations about which is the most appropriate preposition to use.

“Attention to detail is paramount as it reduces litigation costs and ensures our patents secure broad coverage that protect our clients’ business interests.”

What impresses you the most about your colleagues?

Joe said it’s how they make everyone around them better.

“You don’t learn how to be a patent attorney in school. You need to learn it on the job,” he said. “There is a culture here to teach new attorneys well and to do things the correct way from the start. And that culture of learning is promoted with respect.

“We also work in a very collaborative manner. I have never felt a need to navigate tough office politics. There also is a great personality fit – you want to genuinely like your coworkers.”

HFZ delivers great work for its clients, but how does the firm take care of its employees as well?

Joe says HFZ quickly recognizes and rewards good work by its employees.

“In my experience, responsibility, opportunity, and promotion were offered early,” Joe said. “Perhaps that’s a testament to the quality teaching culture here.”

What would you be if you were not a patent attorney?

“After spending a summer in college working a toll booth, it wouldn’t be that,” Joe said. “That job did give good stories for parties, though.

“If I didn’t have this career… I don’t know… perhaps something in meteorology or astronomy. So – still technical. I guess not much of a stretch.”