Category: Insights

In a world driven by innovation and technology, patent law is an exciting and fulfilling career path for engineers seeking new challenges and opportunities. At Hanley Flight & Zimmerman, we have witnessed firsthand how engineers can leverage their technical expertise to excel in patent law.

In addition to two of the firm’s founders, Mark Zimmerman and Mark Hanley, many of HFZ’s patent attorneys started their careers working in the engineering field before studying law.

“It’s a great career path for an engineer,” said Michael Zimmerman, an electrical engineer who transitioned to patent law and has been with HFZ for nearly two decades.

Another longtime HFZ patent attorney, Sergio Felice, worked as a mechanical engineer after earning his undergraduate degree. Reviewing patents during his time as an engineer opened his eyes to a more rewarding opportunity in intellectual property law.

“I always had a desire for learning about new technologies,” he said. “I realized that as a patent attorney, I could mesh the two worlds of engineering and law.”

HFZ protects the innovations of some of the world’s leading corporations, meaning our team is constantly exposed and learning about new technologies. In addition, here are more reasons why patent law is an ideal career pivot for engineers, and how HFZ provides the necessary training and mentorship for engineers looking to make this transition.

The Intersection of Engineering and Patent Law

Engineers are inclined to think analytically and solve complex problems, making them a perfect fit for patent law. At HFZ, we recognize that engineers bring a unique set of skills and perspectives to the legal world. Our team of patent attorneys and engineers have discovered the value of their engineering backgrounds in patent law, and they thrive in this dynamic environment.

Utilizing Technical Expertise: One of the key reasons engineers are drawn to patent law is the opportunity to apply their in-depth technical knowledge to protect and advocate for intellectual property. At HFZ, we focus on patent prosecution, the process of drafting and submitting patents for approval, and this focus gives our clients the highest patent protection available. Our patent engineers and attorneys at HFZ specialize in working with inventors, scientists, and engineers to secure patents for their groundbreaking inventions. This close alignment of skills and passion fosters a sense of purpose and satisfaction in our team members.

Problem Solving: Engineers are renowned problem solvers, and this skill translates seamlessly into the world of patent law. Identifying novel solutions to patentability challenges, analyzing intricate technical documents, and drafting forward-looking patent applications all require the same analytical thinking and innovative problem-solving mindset that engineers excel in. This foresight enables them to draft patent applications with a strategic edge, helping clients stay one step ahead in an ever-evolving technological landscape.

HFZ’s Approach to Career Transition

Transitioning from an engineering career to patent law may seem daunting. That’s why HFZ developed a structured pathway to help engineers successfully transition into this rewarding field. Our approach bridges the gap between engineers’ technical expertise and burgeoning legal knowledge.

Becoming a Patent Engineer: At HFZ, engineers first become patent engineers, a pivotal step in their journey to becoming patent attorneys. In this role, they work alongside seasoned patent attorneys, gaining invaluable experience in patent prosecution and patent portfolio management. This hands-on experience allows engineers to develop a deep understanding of patent law while leveraging their technical backgrounds.

Studying Law: We encourage our patent engineers to pursue legal studies, often through part-time or online programs, while they continue to work at HFZ as patent engineers. This dual approach ensures that they are well-equipped with both the legal expertise and engineering acumen required for success in patent law.

Mentorship and Guidance: HFZ is committed to providing mentorship and guidance throughout the career transition process. Our seasoned attorneys and patent engineers are readily available to support and mentor engineers at every step of their journey, offering insights, advice, and a supportive community.

How can I get started?

If you’re an engineer with a passion for innovation and an interest in intellectual property, consider making the career change to patent law with HFZ. Your engineering background is a valuable asset, and we are here to help you unlock your potential in the world of patent law. Contact us with your resume and embark on a rewarding career that combines your technical prowess with the intricacies of patent law.

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.

How It Started

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.

How It’s Going

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.

Where He’s Headed

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.

Off the Clock

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.

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.

Why did you decide to practice patent law?

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.

What attracted you to join HFZ?

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.”

How does the team at HFZ work together?

“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.

What else makes HFZ a great place to work?

“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.”

Why do your clients enjoy working with you and the firm?

“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.

• 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.”