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.”

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.”

Twenty years.

That’s not just a milestone anniversary Hanley Flight & Zimmerman is celebrating this year.

It’s a number that’s symbolic to the company’s origin story and success.

Two decades ago, Mark Hanley, James (Jim) Flight and Mark Zimmerman worked together at a large intellectual property law firm in Chicago.

The three were inspired to do something different. Build a firm that rewarded excellence, not just billable hours. Work as a team, not just as individuals.

And most importantly, focus only on patent prosecution, securing 20 years of exclusivity for inventions of the world’s leading corporations.

Twenty years later, those ideas continue to make HFZ a success, and a firm trusted by the best. The law firm represents seven of the top 25 patent-earning companies in the U.S., and its client roster includes Ford, GE, VMware, McAfee, Texas Instruments and Nielsen, among others.

“HFZ helps some of the most innovative companies in the world invest in cutting-edge technologies that advance the quality of life in countless ways for people around the world,” Jim Flight says.

“The U.S. patent system has been instrumental in building the most powerful economy in human history and has driven some of the world’s most significant technological developments. Without patent protection, the amount of investment in new technology will fall.”

Before the three founders realized their shared goals in patent law, they had similar stories growing up and early in their professional careers. They came from working-class backgrounds and were interested in engineering before pursuing law school at night to become patent attorneys, a path not only followed by many HFZ employees but encouraged and supported through the firm’s mentorship program.

As a youth, Mark Hanley tinkered with things and mowed lawns, including the yard of a patent attorney who showed him what his job was like. Years later, Mark left his electrical engineering career to pursue patent law.

Jim Flight was introduced to a patent attorney through his father, a carpenter who had worked on the lawyer’s home. Later, Jim was led to pursue patent law by the father of a college friend who opened his eyes to the legal world.

Mark Zimmerman grew up in his family’s construction business, Wm. Tonyan & Sons of McHenry, Illinois, before becoming an electrical engineer and later working for Motorola before entering law school.

After landing at the same law firm, they saw a changing market for IP legal services. There was an industry need for a service-oriented firm that focused on securing patents ready for enforcement.

They also had a common desire to build a unitary business rather than operate as a group of individuals sharing space and competing for staff and associate resources.

“A new firm for the new approach was really the best option for us,” Mark Hanley said.

They launched HFZ in the Civic Opera Building at 20 N. Wacker with five partners, one assistant and a handful of clients.

Today, HFZ has grown to 18 partners, 23 additional patent practitioners and about 30 staff, offering their clients dedicated teams for electrical, mechanical, software and biomedical patent services.

“We really have a solid team at HFZ,” Mark Zimmerman said. “During our time, we have seen substantial growth in the diversity of people practicing patent law and we have recruited top-notch women at all levels of the firm.”

HFZ’s accomplishments include a collection of world-class technology clients and a highly skilled team of patent practitioners, but Mark Hanley says there’s another:

“Prospering during the economic downturn of 2008-2009 and the pandemic without having to lay off a single person,” he says. In fact, HFZ saw its practice grow in those times with some clients sending more work to ensure the firm weathered the storm.

The founders purposely built the firm to operate as one, with everyone rowing in the same direction, and they put this into practice. One example is the firm’s mentorship program, which provides new hires with frequent feedback, both qualitative and quantitative. It is a significant time investment, but it ensures alignment across the firm – and helps address any issues before they become problematic.

“There is solid trust at the base of our relationship,” Mark Hanley said. “This allows us to push ideas around, challenge the ideas, and work to get to the best solution to the problems we are trying to solve, without resulting in bad feelings toward one another at the end of the day.

“While we may work relatively independently on many tasks and our day-to-day legal work, we stand ready to back each other as needed in difficult situations of all kinds, including client relationships, legal questions, and management problems.”

As for the next 20 years, Mark Hanley says he’d like to see HFZ add to its already great client roster and deepen its excellent team of practitioners and staff who truly enjoy what they do.

“We are grateful for everyone at HFZ, the partners, attorneys, patent agents, and staff, that day-in and day-out focus on performing at the highest level of quality and that make working together so enjoyable,” Jim Flight said. “We also want to thank our clients who have put so much trust in us. We are honored to be trusted by the best.”