Category: Insights

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.”

In the world of patent prosecution, no two days are exactly the same. However, there is a cadence to the work. What does a “typical” day look like at Hanley Flight & Zimmerman? Let’s join Patent Engineer Zachary Herbert for a day in his work life.

How It Started

Zachary graduated from Purdue University in May 2022 with his bachelor’s degree in Aeronautical and Astronautical engineering – a strong technical foundation. Additionally, Zachary interned with HFZ for two summers prior to joining full-time, so he was ready to hit the ground running this summer.

How It’s Going

Zachary starts each day reviewing his docket of work to identify high-priority items and plan his day. Depending on the day, he may be in his home or at the HFZ office in downtown Chicago. Like many of his colleagues, Zachary makes the most of a flexible work schedule to choose the best location for the day, depending on the type of task or collaboration needed.

The work of Patent Engineers like Zachary is a vital part of the patent process. They dig into inventions to understand what patent protection may be available. Patent Engineers also provide detailed examples of how to build and use the invention in the patent application itself, working with the inventor to better understand the product or process to develop the specification with alternative approaches.

Throughout the day, Zachary can take on a variety of patent prosecution tasks. He may participate in Patent Examiner interviews with HFZ attorneys or work with inventors to properly explain and define their inventions. His day typically includes writing, be it drafting patent applications with the support of senior patent attorneys; preparing Office Action Responses; or incorporating feedback from other members of the HFZ team on the project. When in the office, Zachary can grab lunch with his teammates or take a walk along the river for a quick break to recharge mid-day.

Where He’s Headed

While Zachary joined HFZ following two successful internships, continuing his career growth is an important part of his job. Zachary has regular meetings with his mentor, Mark Hanley. HFZ’s mentorship program was intentionally crafted to help new patent engineers build relationships, receive meaningful and timely feedback, and make the most of their first year in practice. The supportive environment is part of why Zachary chose to stay with HFZ following his internships.

Like many early-career Patent Engineers, Zachary focuses on his career path after hours as well. He has been applying to law school, which he will start next fall. Attending law school while working can be challenging, so having the mentorship of seasoned professionals that have been through the process is essential.

Off the Clock

While his degree in Aeronautical and Astronautical engineering means Zachary is interested in how things fly, he also enjoys the end product. Zachary is working to obtain his Private Pilot License. Physical activity is another key part of Zachary’s day; he stays active either rock climbing or going for a run. He finds that consistent effort helps him stay focused, energetic and ready for the next challenge.

Mark Zimmerman has a hard time believing that Hanley Flight & Zimmerman is celebrating more than 20 years of service. Today, they’re one of Chicago’s most successful intellectual property law firms. For Zimmerman, it still feels like they opened for business just yesterday.

In a recent conversation, he shared his thoughts on HFZ’s first two decades — and talked about the time he accidentally scored a patent of his own.

Getting a patent is only part of the job. Zimmerman wants to make clients’ IP bulletproof.

HFZ helps clients secure patents for their inventions, but that’s only part of what the team does. The firm also develops strategies for protecting those patents from people who might challenge them later in court.

“You can kind of go through the motions and get someone a patent and pray that it never gets litigated,” Zimmerman said.

“Or you can treat it like it’s an asset. Like we expect it to be litigated one day and treat it like it’s really, really important. Our firm falls into the latter category – we want to issue patents that withstand litigation.”

One of the keys to HFZ’s success? They’re attorneys who can think like engineers.

In fact, more than a few of the firm’s attorneys are former engineers. That includes Zimmerman, who got his start as a design engineer with Motorola.

The team’s know-how makes a huge difference when inventors come in and explain how their technology works. HFZ grasps new ideas quickly.

“I think our technical expertise sets us apart,” Zimmerman said. “Of course, we don’t know all the intricacies of what they’re doing because what they’re doing is new. But we’re able to get into the ballpark pretty fast.”

The happiest man at Motorola inspired Zimmerman to become a patent attorney.

Early on, when he was trying to figure out the next step in his career, Zimmerman talked to senior people in several departments. Of everyone he interviewed, the person who seemed happiest was a patent attorney.

Zimmerman still remembers their talk: “He says, ‘You know what, Mark? I have the best job in this whole company.’ And he tells me the job is meeting with the engineers, learning about the new inventions and getting them protected. And that sounded cool.”

It inspired Zimmerman to go to law school at night, join a law firm specializing in intellectual property — and eventually launch HFZ with Mark Hanley and Jim Flight.

Zimmerman has something in common with clients: He has a patent, too.

HFZ makes a point of going above and beyond for clients, Zimmerman said. But one case stands out.

“I was thinking about a client’s problem before the meeting and thought up a solution. I said, ‘Couldn’t you guys do this?’” he recalled. “The client really liked the invention, so we worked together to patent it. I think that kind of invention only occurs when you are deeply thinking about your client’s business and their problems. It is gratifying to have that kind of relationship and a very enjoyable way to work.”

He’s not just HFZ’s co-founder. He’s the former head of accounts receivable.

When you’re starting a new business, sometimes you have to wear multiple hats. In Zimmerman’s case, he was responsible for accounts receivable while Hanley took point on accounts payable.

“You could tell the two guys who were patent attorneys by day had, by night, done the accounting work,” Zimmerman said.

One milestone for HFZ was when they realized they had enough business to justify hiring an accountant, which was surprisingly early on in the history of the business.

If he wasn’t a lawyer, he’d probably be building things.

Zimmerman grew up in his family’s construction business, Wm. Tonyan & Sons of McHenry, Illinois. “My dad and my uncles owned a business that my cousins run now,” he said. “And so I started working there when I was in the eighth grade. I think now if I weren’t doing this, I would want to be building things.”

That first job taught him lessons that he still uses at HFZ.

“I like making a business work — that kind of thing that you don’t get taught in law school,” he said. “And I think I learned a lot of that from my dad, just watching him run the construction company when I was a kid.”

It’s all about protecting clients’ ideas.

A big part of HFZ’s job is talking with patent examiners, the government officials who decide whether an invention meets the standard for patentability.

“A lot of times it gets down to talking on the phone with the examiners, explaining who your client is, what they’re bringing to the table and letting the examiners understand that the inventor is a real person that solved a real problem,” Zimmerman said.

“And that’s what we’re trying to protect. We’re trying to protect what our inventors brought to the table.”

When it comes to the traditional law firm onboarding process, one recent tweet sums up a far too common scenario:

As evidenced by nearly 1,000 likes, the author describes a feeling of loneliness and confusion that is familiar to many. Indeed, the American Bar Association shared one survey in which 88 percent of associates said the right mentor was essential for career development….but only 27 percent said one was available to them.

Lack of mentorships is one problem; the success of mentorships is another. In a survey by Major, Lindsey & Africa, less than one-third – 29 percent – of associate lawyers said mentors made a significant difference.

Looking to address both of these concerns, Chicago’s Hanley Flight & Zimmerman (HFZ) created a mentorship program designed to build quality relationships and provide real-time feedback, both quantitative and qualitative, to help new lawyers and patent engineers make the most of their first year in practice.

The fundamentals of the program:

• Every new hire is assigned a mentor. Mentors are HFZ’s capital members, experienced lawyers or experienced patent agents.
• Mentors and mentees meet frequently. This frequency means that if a problem does surface, it is addressed early – and the practitioner has sufficient time to course-correct.
• Once a month, mentors review the mentees’ key performance indicators (KPIs), reports that show quantitative measures such as efficiency, on-time delivery and billable hours.
• Mentors also share qualitative feedback. Through the firm intranet, HFZ colleagues can share praise or advice on an ongoing basis; this is collected by the mentors and shared with the mentees monthly as well.

“Together, the KPIs and the feedback drive their conversations so they talk about things that matter,” said Founding Member Mark Zimmerman. “Here’s how you are performing on paper, and here’s what people are saying.”

In addition to providing meaningful structure to the mentor-mentee meetings, Zimmerman said the format prevents any shocking revelations at year-end evaluations.

“It makes the end-of-year review like getting a report card,” he said. “You know the grades you have earned throughout the class. There are no surprises.”

It’s a vastly different approach to what he and the other firm founders endured as associates, Zimmerman said.

“We didn’t receive hours reports, we didn’t receive efficiency reports, and no one was assigned to us,” he said. “Some people had the mentors they needed, but some didn’t.”

By creating formal mentor-mentee pairs – and providing them a helpful structure – the HFZ program has proven to benefit more than just the new hires.

“It helps the mentors remember what it was like to be at that stage, to remember the demands on these people, and to adjust expectations,”  he said. “It also benefits the entire firm to have people truly invested in these people’s success – it makes a more pleasant sandbox.”

Over the long run, it helps clients too, he said: “Any time we have people with the firm doing the work in a way that delivers consistency and quality, it benefits our clients.”