Marshall Honeyman

Shareholder

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).

  • J.D., Washburn University
  • B.S., Mechanical Engineering, Kansas State University
  • Kansas
  • Missouri
  • U.S. Patent and Trademark Office
  • Managing Intellectual Property’s IP Star, 2013-2020
  • Kansas Bar Association’s IP Attorney of the Year, 2016
  • Missouri & Kansas Super Lawyer, 2005, 2018-2021
  • Best Lawyers in America, Litigation – Intellectual Property, 2017-2022
    • 2019, 2021 Kansas City, KS Litigation – Intellectual Property “Lawyer Of The Year”
  • S. Patent and Trademark “On the Spot” Award, 2001
  • S. Patent and Trademark Special Achievement Award, 1999
  • Speaker, Innovative Manufacturers: To Patent or Not to Patent, FABTECH, September 15, 2021
  • Author, Timely Interest in UV-C LEDs May Complicate the Patent ProcessLEDs Magazine, September 2020
  • Author, Innovative Manufacturers: To Patent or Not to PatentThe Fabricator, October 2019
  • Speaker, Obtaining and Litigating Patents in the LED Industry, Strategies in Light, Las Vegas, NV, February 27, 2019
  • Speaker, Patent Rights in Metal Processing, FABTECH, November 7, 2018
  • Author, Create a Clear Patent Strategy for Collaborative SuccessLEDs Magazine, May 2018
  • Speaker, Patent Rights; Building Yours; Battling Theirs, Strategies in Light, Long Beach, CA, February 13, 2018
  • Speaker, Patents: Being A Hammer, Not a Nail, Strategies in Light, Anaheim, CA, February 17, 2017
  • Speaker, The Latest Changes in US Patent Law: How they Affect Intellectual Property Strategies, Strategies in Light LED Show, Santa Clara, CA, March 2016
  • Author, America Invents Act Impacts Patent RightsLEDs Magazine, February 2016
  • Speaker, Patents: Your Automotive Products in a Changing World, SEMA Show, Las Vegas, NV, November 2015
  • Speaker, Should I Patent It Now33rd Annual Plaza Lights Institute, Kansas Bar Association, Kansas City, MO, December 4, 2015
  • Speaker, Your Brands, Your Ideas, and Other Intellectual Property, Kansas Bar Association Corporate Counsel Update, Lenexa, KS, March 30, 2012
  • Speaker, IP Triage, Association of Corporate Counsel, Kansas City, MO, February 15, 2012
  • Speaker, IP for Non-IP Attorneys, Kansas Bar Association/KSU Foundation CLE Slam-Dunk, Manhattan, KS, February 13, 2012
  • Speaker, Restriction and Election Practice, State Bar of Nevada Intellectual Property Conference, Las Vegas, NV, October 21, 2011
  • Speaker, Patents Today – The Cheese Has Moved – How to Handle It, Strategies in Light, Santa Clara, CA, February 10, 2010
  • Speaker, Pursuing Patents in a Changing World, SPIE Photonics West, San Francisco, CA, January 26, 2010
  • Author, When Not to PatentJournal of the Kansas Bar Association, June 2009
  • Speaker, Restriction and Election, LAKC’s Annual IP CLE; December 3, 2008
  • Author, When Not to Patent, Intellectual Property & Technology Law Journal, June 2008
  • Author, Patent Logic Tree Identifies Key Decision Steps for FilingLEDs Magazine, May/June 2008
  • Speaker, When Not to File a Patent, Live Webcast, the International Society for Optics & Photonics (SPIE), May 14, 2008
  • Author, Patent Your CareerSPIE Professional, January 2007
  • Speaker, 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
  • Speaker, Patent Course, Lightfair, Las Vegas, NV, 2006
  • Speaker, Technology Transfer: From Lab to Reality, Doing Your IP Due Diligence Along the WayASME International Mechanical Engineering Exposition, Chicago, IL, 2006
  • Speaker, Five Things People Do to Mess Up Their Patent Rights,National Manufacturing Week, ASME International, Chicago, IL, 2005 and 2006
  • Speaker, The Optical Patent short course, SPIE’s Photonics West Conference, San Jose, 2004-2005, and 2006
  • Speaker, 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)
  • Kansas Bar Association
    • IP Section President, 2008-2009
  • Johnson County Bar Association
  • Wichita Bar Association