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 United States Patent and Trademark Office (USPTO) as a patent examiner and then as an associate solicitor. As an examiner, 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.

In private practice, Marshall has extensive experience in numerous technology areas, including: (i) aerospace systems and manufacture; (ii) optical systems and devices; (iii) automotive lighting and other components; (iv) missile guidance systems; power generation systems and equipment including fuel cells, reformers and other hydrogen-power-related arrangements; (v) computer systems, software and hardware; (vi) printed circuit board layouts; (vii) network devices; (viii) refining systems and processes; light emitting diode (LED) systems and fabrications; (ix) Virtual Takeoff and Landing (VTOL) vehicles; and (x) UV-C antimicrobial lighting applications.

As an associate solicitor at the USPTO, he handled lawsuits brought against the office as well as acting as a lead attorney in 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. 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 (OED).

Awards

Managing Intellectual Property’s IP Star, 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

Timely Interest in UV-C LEDs May Complicate the Patent Process, LEDs Magazine, September 2020
Innovative Manufacturers: To Patent or Not to Patent, The Fabricator, October 2019
Create a Clear Patent Strategy for Collaborative Success, LEDs Magazine, May 2018
America Invents Act Impacts Patent Rights, LEDs Magazine, February 2016
When Not to Patent, Journal of the Kansas Bar Association, June 2009
When Not to Patent, Intellectual Property & Technology Law Journal, June 2008
Patent Logic Tree Identifies Key Decision Steps for Filing, LEDs Magazine, May/June 2008
Patent Your Career, SPIE Professional, January 2007

Presentations

Innovative Manufacturers: To Patent or Not to Patent, FABTECH, September 15, 2021
Obtaining and Litigating Patents in the LED Industry, 2019 Strategies in Light, Las Vegas, NV, February 27, 2019
Patent Rights in Metal Processing, FABTECH 2018, 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