Professional Profile

Marshall Honeyman’s deep experience in patent prosecution and focus on technology adds value to Erise IP’s client services.

Marshall focuses on advising Erise’s high-technology clients in the area of patent prosecution. Prior to joining Erise, his experience as an intellectual property attorney includes serving as a firm partner as well as working in the USPTO (United States Patent and Trademark Office) as a patent examiner and then as an Associate Solicitor. His background also includes serving as an ADA (Assistant District Attorney) for the 18^th Judicial District in Wichita, Kansas. There, he litigated a wide range of felony criminal cases.

In private practice, his experience has included licensing and technology transfer patents. Through his patent practice, he has experience in numerous technology areas, including:

Aerospace systems and manufacture
Automotive components
Missile guidance systems
Power generation systems and equipment including fuel cells, reformers and other hydrogen-power-related arrangements
Computer systems and hardware
Printed circuit board layouts
Network devices
Refining systems and processes
Optical devices
Light emitting diode (LED) systems and fabrications
Musical instruments

During his time at the USPTO, Marshall reviewed and acted on patent applications directed to, inter alia, lighting arrangements and devices, computer display light guides, fiber optics, LED arrays and complex automobile headlamp configurations. As an associate solicitor, he handled law suits brought against the USPTO as well as ex parte appeals to the Court of Appeals for the Federal Circuit. Additionally, he co-managed the section of attorneys responsible for litigating disciplinary actions against patent practitioners.

He regularly represents clients in complex intellectual property matters, and his previous matters include defending the USPTO Commissioner as lead briefing attorney in BlackLight Power Inc. v. Rogan, and he also litigated disciplinary complaints against patent practitioners on behalf of the Director of the USPTO Office of Enrollment and Discipline. Additionally, he served as lead attorney on ex parte appeals to the Federal Circuit.

Awards

“IP Star” by Managing Intellectual Property (2013-2020)
Kansas Bar Association’s “IP Attorney of the Year,” 2016
Missouri & Kansas “Super Lawyer”, 2005, 2018-2020
Best Lawyers in America, Litigation – Intellectual Property (2017-2021)
- 2019, 2021 Kansas City, KS Litigation – Intellectual Property “Lawyer Of The Year”
U.S. Patent and Trademark “On the Spot” Award, 2001
U.S. Patent and Trademark Special Achievement Award, 1999

Publications

Author, Create a Clear Patent Strategy for Collaborative Success, LEDsmagazine, May 2018

Author, America Invents Act Impacts Patent Rights, LEDsmagazine, February 2016

Author, When Not to Patent, The Journal of the Kansas Bar Association, June 2009

Author, When Not to Patent, Intellectual Property & Technology Law Journal, June 2008

Patent Logic Tree Identifies Key Decision Steps for Filing; LEDs Magazine (UK); Issue 21 May/June 2008; pp.19-21
Author, Patent Your Career; SPIE Professional; pp.6-7; January 2007

Presentations

Obtaining and Litigating Patents in the LED Industry, 2019 Strategies in Light; Las Vegas, NV, scheduled for February 27, 2019

Patent Rights in Metal Processing, FABTECH 2018 (Metal Forming, Fabricating, Welding, and Finishing Event), scheduled for November 7, 2018

Patent Rights; Building Yours; Battling Theirs, 2018 Strategies in Light, Long Beach, CA, February 13, 2018

Patents: Being A Hammer, Not a Nail, 2017 Strategies in Light, Anaheim, CA; February 17, 2017

The Latest Changes in US Patent Law: How they Affect Intellectual Property Strategies, 2016 Strategies in Light LED Show, Santa Clara, CA, March 2016

Patents: Your Automotive Products in a Changing World, 2015 SEMA Show, Las Vegas, NV, November 2015

Should I Patent It Now?, 33rd Annual Plaza Lights Institute, Kansas Bar Association, Kansas City, MO, December 4, 2015

Your Brands, Your Ideas, and Other Intellectual Property, Kansas Bar Association Corporate Counsel Update, Lenexa, KS, March 30, 2012

IP Triage, Association of Corporate Counsel, Kansas City, MO, February 15, 2012

IP for Non-IP Attorneys, Kansas Bar Association/KSU Foundation CLE Slam-Dunk, Manhattan, KS, February 13, 2012

Restriction and Election Practice, State Bar of Nevada Intellectual Property Conference 2011, Las Vegas, NV, October 21, 2011

Patents Today – The Cheese Has Moved – How to Handle It, Strategies in Light, Santa Clara, CA, February 10, 2010

Pursuing Patents in a Changing World, SPIE Photonics West, San Francisco, CA, January 26, 2010

Restriction and Election, LAKC’s Annual IP CLE; December 3, 2008

When Not to File a Patent, Live Webcast; The International Society for Optics & Photonics (SPIE), May 14, 2008

Off the Beaten Path: Career Opportunities for Engineers in the Patent Boom (Law Degree Not Required), SPIE’s Photonics West Conference, San Jose, CA, 2007

Patent Course, Lightfair, Las Vegas, NV, 2006

Technology Transfer: From Lab to Reality, Doing Your IP Due Diligence Along the Way, 2006 ASME International Mechanical Engineering Exposition, Chicago, IL, 2006

Five Things People Do to Mess Up Their Patent Rights; National Manufacturing Week, ASME International, Chicago, IL, 2005 and 2006

The Optical Patent short course, SPIE’s Photonics West Conference, San Jose, 2004-2005, and 2006

Using Patents as a Business Tool short course; The International Symposium on Optical Science and Technology, SPIE’s annual meetings, 2002 (Seattle), 2003 (San Diego), and 2005 (San Diego)

Memberships

Kansas Bar Association, IP Section President, 2008-2009
Wichita Bar Association
Johnson County Bar Association

Licenses

Marshall is registered to practice before the U.S. Patent and Trademark Office, and he is admitted to practice before the state courts of Kansas and Missouri.

Education

J.D., Washburn University

B.S., Mechanical Engineering, Kansas State University