Michael Zimmerman, a patent attorney with Hanley Flight & Zimmerman, is included in the 2024 edition of The Best Lawyers in America® released today. This honor places Michael among the top lawyers in the Chicago area for patent law.
Every year Best Lawyers analyzes more than 13 million lawyer evaluations to compile its rankings, which are based on peer review and feedback. More information about Best Lawyers’ methodology is available here.
Hanley Flight & Zimmerman Co-Founders Mark Hanley and Mark Zimmerman have been honored as “Patent Stars” in IP STARS’ annual guide to the top intellectual property attorneys in Illinois and nationwide in the United States.
More information about HFZ’s honors is available on IP STARS.
The annual IP STARS rankings are compiled during a six-month research process performed by Managing Intellectual Property’s team of analysts. The methodology evaluates expertise, market intelligence and feedback from clients and competitors. Read more about the selection process here.
Hanley Flight & Zimmerman as well as firm co-founders Mark Hanley, James Flight, and Mark Zimmerman have been ranked in the 2023 edition of the IAM Patent 1000, an annual guide to the world’s leading patent law firms and individuals.
Along with the co-founders, IAM listed HFZ among its recommendations for patent prosecution in Illinois: “The team has particularly deep expertise in the electrical, computer and software fields. It is an excellent firm for US patent preparation and prosecution, and it has some big names on its roster of clientele. It is a top IP outfit and its practitioners provide straightforward and effective solutions that help to achieve patrons’ goals.”
HFZ’s complete Patent 1000 profile is available here.
The Patent 1000, published by Law Business Research, uses qualitative research, including interviews and written submissions, to select top firms and individuals. More information about the methodology is available here.
June 23 is International Women in Engineering Day, an awareness campaign created to celebrate the work and achievements of women engineers.
As part of this year’s celebration, Hanley Flight & Zimmerman recognizes and applauds the contributions of our women engineers. We also sat down with two of our practitioners to listen to their stories about breaking through in male-dominated industries — engineering and patent law — and their thoughts on increasing the representation of women in these fields.
The number of women in architecture and engineering occupations in the workforce has only increased 11.1% in the last 40 years, to 16.1% in 2022, according to the U.S. Bureau of Labor Statistics. Obviously, women in engineering fields are still woefully underrepresented. Only 1 in 10 employed electrical engineers in 2021 were women, out of nearly 280,000 nationwide, according to Census Bureau data.
Taylor Grote, a Patent Engineer at HFZ, saw these low percentages firsthand while studying for her bachelor’s degree in Electrical Engineering at Purdue University. During a summer internship, she said it was “in your face obvious that I would be working alongside mostly men for the foreseeable future.” One full-time mechanical engineer and one other intern were the only women in the company’s engineering department.
Those numbers didn’t discourage her from working in the field. In high school, Taylor excelled in math and loved all her history classes, leading to a suggestion from her father that she explore patent law as a career. After her summer internship and graduation, Taylor joined HFZ, where she helps the firm’s clients secure patent protection. She’s also enrolled in law school, continuing her quest from engineer to patent engineer to patent lawyer.
While women comprise 37% of licensed attorneys, they represent just 17% of patent attorneys, according to a 2021 American Bar Association survey. Taylor says being a woman engineer in Intellectual Property law holds personal significance.
“I took a very different career path than my girlfriends, which wasn’t necessarily easy. And not because engineering is harder, but simply because I’m not able to relate to their careers as easily and I was making different friends than them,” she said. “So at times, I may or may not have wanted to switch my career. But I didn’t switch — and I absolutely love where I’m at now.”
Marianne Buckley, a patent attorney and Capital Partner, agrees with Taylor that HFZ has supported them and their career growth. Before graduating law school and joining HFZ, Marianne earned a bachelor’s degree in Biomedical Engineering and worked in the research and development department of a healthcare data analytics company. Today she prosecutes U.S. and foreign patent applications in the biomedical, mechanical and electro-mechanical arts, 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 more.
“I’m grateful for the opportunities that HFZ has given me from day one to participate in many aspects of the firm, to interact with clients, and to develop my career in an environment that values hard work and professionalism,” she said.
Marianne says HFZ is “ahead of the game” in recruiting to increase the number of women in the field of patent law by attending engineering career fairs at universities.
“This enables us to introduce patent law as a career path for women pursuing an engineering degree earlier — as compared to engineers who may not be introduced to patent law until later in their careers while working in the industry,” she said, adding that HFZ also holds information sessions about patent prosecution for first- through third-year law students, furthering outreach.
Taylor says continuing to educate women, and girls, about the opportunities in engineering and patent law — in these ways and even earlier, such as in high schools — will help increase interest in these fields, and in turn produce the next generation of patent practitioners at HFZ and beyond. While more work needs to be done, nearly one-third — 28% — of HFZ’s practitioners are women.
“I think the environment at HFZ lends itself to support and encourage women to grow in the profession,” she said. That environment will continue to strengthen HFZ as it continues to grow with some of the most talented professionals in patent law.
There’s never really a “typical” day at Hanley Flight & Zimmerman. While our practitioners’ work product is consistently high-quality, they’re constantly exposed to cutting-edge technology and innovations and are developing unique strategies for clients to secure the strongest possible patent protection.
One of those practitioners is Patent Attorney Michael Zimmerman. Let’s join him for a look into a day of his work life at HFZ.
Growing up, Michael enjoyed exploring and understanding how devices worked and wanted to become an engineer. While completing a combined bachelor’s and master’s degree program in Electrical Engineering, Michael was introduced to patent law. After graduation, he saw patent law as a way to continue his engineering career. Michael initially joined HFZ as a full-time patent engineer who attended law school part-time.
Now a patent attorney at HFZ after earning his law degree, Michael uses his engineering background to understand inventions, consider the prior art, help inventors explain their inventions, and argue for patentability of inventions.
“Patent law is a great career path for an engineer,” he said.
In his current position, Michael has a mix of tasks. Some are hands-on, such as preparing patent applications or responding to communications from patent offices around the world. Others are supervisory, such as overseeing the work of other HFZ patent practitioners and teaching young practitioners the best techniques in the industry.
He enjoys the challenges and variety of the work. Some days he meets with inventors and drafts descriptive figures and text. Other days, he develops procedures, learns about new rules or case law, reviews the work of other practitioners, and/or develops best practices.
HFZ gave Michael the opportunity to train patent practitioners, learning how to better communicate expectations and responsibilities to newer practitioners. Today, he has advanced from a practitioner working under the mentorship of other attorneys into a mentor providing guidance to other patent practitioners.
Michael says practitioners find opportunities to fit work time around outside activities. For example, when he’s not prosecuting patents or mentoring practitioners, Michael coaches his son’s baseball team.
“Sometimes I need to get to practices or games in the early evening, but I can utilize the opportunity to get to work early or complete some activities later in the evening,” he said. “Such flexibility has been invaluable in trying to manage all of the different activities and responsibilities in my life.”
Hanley Flight & Zimmerman is fortunate to work with the best. To do that, the firm was intentionally structured to give its employees time to recharge from the significant work they perform for clients and create space for personal and family obligations.
Brandon Dube, a patent attorney who prepares and prosecutes U.S. and foreign patent applications in the mechanical and electro-mechanical arts, recently discussed how he finds work-life balance at HFZ.
The main way is through planning and scheduling. In addition to having the flexibility to work remotely at home or in the office, practitioners at HFZ — patent agents, engineers and attorneys — can handle matters at their own pace as long as deadlines are met. Deadlines are usually set out months in advance, giving practitioners ample time to manage their schedules.
“As long as a practitioner meets their deadlines, they can easily make time for their families and interests outside of work,” Brandon said.
In his case, Brandon is an avid golfer and wants to get on the golf course as much as possible during the summer.
“When the weather gets warmer, I’ll often take advantage of my flexible workload by starting my day a couple of hours sooner so that I can wrap up earlier in the afternoon to golf,” he said.
Most of HFZ’s clients also maintain traditional work hours, so urgent matters such as client calls or emails outside of normal working hours are rare. There is also a good mix of collaboration between the practitioner and overseeing managing partner, as well as strategy calls with the client, so that expectations are set and understood in advance of deadlines. HFZ also evaluates workload distribution across the firm, a team-based approach that not only reduces strain on employees but results in a superior work product for the client.
Also, for attorneys, HFZ’s yearly hourly requirement is easily attainable through a normal work schedule. Brandon also says the firm’s founders lead by example in taking time from work for their families, travel, and hobbies.
“From my experience, the typical practitioner at HFZ can maintain traditional workday hours with few late-night emails or weekends in the office. It is rare that a practitioner would ever have to delay a life event because of work,” Brandon said.
While HFZ employees can find flexibility in their schedules, it doesn’t reduce work quality. HFZ represents six of the Top 25 U.S. companies who earned the most granted patents from the USPTO in 2022 and was recently ranked as one of the top five large law firms in the country for patent quality by Patent Bots.
While at work in the office, HFZ employees can take advantage of a company-paid membership at an on-site gym that also offers amenities such as fitness classes. On special occasions, lunch is catered to the office in the HFZ Cafe, which doubles as a communal gathering space. HFZ also routinely plans social outings such as bowling, Top Golf, baseball games, and river boat tours.
While HFZ is flexible with remote work, the firm continues to prioritize a modern and comfortable office space for in-person work. The firm is planning to move into a new space at 10 S. Wacker this year that will provide even better views of the city.
Hanley Flight & Zimmerman is honored to be recognized among Patent Bots®, top 10 large patent law firms in its fourth annual Patent Quality Rankings. HFZ ranked fifth in the 2023 rankings, another reason why HFZ is trusted by the best companies to protect their innovations.
In conducting its analysis, Patent Bots reviewed more than 300,000 patents issued by the United States Patent and Trademark Office in the past year and ranked firms who issued at least 500 patents in the last calendar year based on the average number of errors in their patents.
HFZ moved up in this year’s large law firm ratings from eighth last year. See the full list at Patent Bots®.
Sergio Filice is going on his 16th year at Hanley Flight & Zimmerman, where his practice focuses on patent prosecution and patent portfolio development in the mechanical and electro-mechanical arts.
He works with inventors and engineers to quickly grasp and analyze their inventions and provides the highest level of quality and protection for their intellectual property.
“I have been blessed to have been part of this journey with HFZ,” he said.
We recently sat down with Sergio to learn more about how he became a patent lawyer and why HFZ is the best place for him to practice.
As a high school senior, Sergio was interested in pursuing a career in either law or engineering. He chose the engineering path because he was always fascinated with how things work and operate.
After graduation, Sergio became a mechanical engineer at Abbott Laboratories, where he was introduced to the patent team that conducted patentability searches on the designs that his team were developing.
“I enjoyed reviewing patents as they provided an in-depth description of how a particular technology worked,” he said. “This was fascinating for me because I always had a desire for learning about new technologies.”
While Sergio enjoyed his time at Abbott as a design engineer, his dream was to become an attorney, so he entered law school.
“I realized that as a patent attorney, I was able to mesh the two worlds of engineering and law,” he said.
The fact that HFZ is a patent boutique firm was very attractive during Sergio’s employment search as a patent attorney.
“I knew that working at HFZ would allow me to develop strong patent drafting and prosecution skills and best practices,” he said. “During my interview with Mark Hanley, Jim Flight and Mark Zimmerman, I was also impressed with HFZ’s two-tier review process and I knew that I would be able to gain the most training and experience at HFZ.
“After my interview, I knew that this was the firm where I wanted to practice. The founders established an atmosphere where everyone collaborates as a team, which results in a high-quality work product.”
“We have an open-door policy that allows me to walk in anyone’s office at any given time to ask questions about a particular matter or case that I’m working on,” Sergio said. “This allows me and other HFZ team members to bounce ideas to improve the quality of our client’s IP. This is a great addition to HFZ’s training process which allows our team to improve our skills while working in a collaborative manner.”
Unlike other firms, HFZ employs a very collaborative approach to representing its clients. While many firms operate as a series of silos, where each partner operates independently and often competes with other partners for resources to service his or her clients, HFZ has strictly avoided such a traditional approach. Founders Mark Hanley, Jim Flight, and Mark Zimmerman have never had a competition for resources, but instead set the tone to ensure HFZ always operates as a team that makes certain the best resources are allocated to complete each project in an efficient and effective manner.
“I really enjoy the variety of technologies that I’m able to work on at HFZ. Unlike other firms that might silo their attorneys to a single client, HFZ’s firm structure enables its attorneys to work with several different clients and technologies.
“We’re also a family-oriented firm that encourages work-life balance. Our yearly hourly requirement is easily attainable through a normal work schedule, providing more time away from the office and with family and friends.”
“Our clients recognize that HFZ strives to provide IP value when growing their portfolios. I also believe that our clients appreciate our consistent, high-quality work product and they feel very confident in our ability to provide robust IP protection.
“As former design engineers, HFZ patent attorneys work with inventors to identify and develop patentable intellectual property. Rather than simply drafting patent applications and claims, HFZ drafts detailed, forward-thinking patent specifications and creative claims to benefit our client’s business objectives and anticipate competitive activity in our clients’ market space.”
The mechanical practice group at Hanley Flight & Zimmerman is an experienced team that handles a broad range of technologies. And with decades of prosecution acumen, HFZ’s mechanical group strategizes and crafts high-quality and thorough patent applications that lead to robust patents for our clients. Many Fortune 100 clients have retained HFZ for our consistent quality, deep expertise, and dedication to their business interests.
Mechanical and electro-mechanical innovations are diverse and all around us. They are in the sky: airplanes and aerospace technologies. In our hands: in the electronic devices we carry. Rolling on the ground: automobiles and bicycles. In the water: marine equipment.
The innovations that HFZ’s mechanical group protects are also found in medical devices as well as household goods (food and beverage packaging, outdoor cooking products, mailers and binding equipment and child care products) and industrial applications (fluid control devices and systems, door and loading dock equipment, pressure washer equipment, and coil processing & roll forming systems).
Prosecuting patents for such a wide range of innovations requires a team of patent attorneys, agents and analysts who have experience in a breadth of related fields. HFZ’s professionals are mechanical engineers who’ve worked for companies such as Abbott Laboratories, Motorola, Brunswick and Ping Golf, to name a few.
Many of our attorneys gained this industry experience before joining HFZ. By dealing with multifaceted and complex issues in the field, the HFZ team grasps our clients’ innovative technologies quickly. Additionally, many of the practitioners at HFZ employ their previous work experience as engineers to improve the patent applications they prepare.
As former design engineers, HFZ patent attorneys work with inventors to identify and develop patentable intellectual property. Rather than describing the current state of an invention, HFZ works with engineers to craft detailed, forward-thinking patent specifications and creative claims to benefit our clients’ business objectives and anticipate developments in their market space.
“We take a very thoughtful approach to obtaining robust and value-added IP protection for our clients,” said Sergio Filice, an HFZ attorney and one of the leaders of the mechanical practice group. “We understand their underlying business goals and apply prosecution strategies to obtain high-quality patents that help maximize the value and utility of their patent portfolios. Our clients consistently retain us because they can rely on HFZ to deliver outstanding services in accordance with their expectations and requirements.”
In addition to prosecution, the HFZ mechanical team provides counseling, including freedom-to-operate analyses, non-infringement and invalidity opinions, pre-litigation case assessment, litigation support, and trademark procurement.
“At HFZ, our primary focus is on the procurement of patent rights for our clients,” Sergio said. “Preparation and prosecution of patent applications is our core competency as an IP boutique. As a result, our practitioners are immersed in drafting and prosecuting patents on a daily basis. Therefore, unlike litigation-focused firms, patent preparation and prosecution are not a loss leader for us; it is our core competency.”
Furthermore, what sets HFZ apart from other patent law firms is the consistent work product. This is a result of the training program that HFZ provides to its practitioners, as well as the firm’s collegial work environment – which enables attorneys to bring a team-oriented analysis to all our clients’ IP matters.
HFZ attorneys also have extensive experience with IP portfolio development and management. For example, HFZ works with large companies that have significant in-house IP teams as well as smaller companies and universities that may lack their own dedicated IP counsel, and HFZ provides strategic advice in those varying contexts. In some instances, HFZ attorneys provide strategic portfolio management and strategic patent advice to many of our clients in a pseudo in-house counsel role. Some of our practitioners work closely with our clients to harvest invention disclosures and conduct and analyze patentability searches and develop a patentability strategy for our clients. We find that taking a long-term strategic view helps the client, improves our patent application drafting and prosecution, and results in a stronger patent portfolio that is more applicable to clients’ evolving needs.
Additionally, as part of our strategic portfolio development and IP analysis, HFZ is often asked by clients to conduct a competitive landscape analysis (e.g., in anticipation of a new product release, for collaboration or licensing, etc.). For example, clients often approach us for analysis when they are developing new products, as well as when a potential issue comes to their attention. Our partnerships with clients to understand their products and business objectives, as well as their patent portfolio, and to learn their competitive landscape helps us to craft informed, reasoned analyses of the prior art and identify blue sky spaces for innovation.
Further, through our relationships with firms throughout the world, HFZ secures not just U.S., but also international and foreign patent protection and provides strategic guidance relating to foreign patent rights. Our partnerships with foreign counsel have helped us understand the patent landscape of many foreign jurisdictions that aid us in developing comprehensive IP strategies worldwide. For example, in many cases, we draft and prosecute applications with the advice of international attorneys abroad, and, in other cases, we provide advice to international attorneys to assist them in the preparation and prosecution of international patent applications.
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.
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.”
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.”
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.
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.”
