Marshall S. Honeyman

Mr. Honeyman is an intellectual property lawyer. His emphasis is on advising clients with respect to patent matters. This involves not only helping clients in getting patents, but also advising them with respect to the patents of others.

Representative areas of technology that encompass his patent practice include:

• 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

Mr. Honeyman’s prior experience includes working as Of Counsel to the firm Shook, Hardy and Bacon from 2001-2006. Before that, he worked in the United States Patent and Trademark Office (USPTO) - initially as a patent examiner, then as an Associate Solicitor. As an examiner, he 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. Before working in the USPTO, Marshall worked in Wichita, Kansas as an Assistant District Attorney (ADA) for the 18th Judicial District. As an ADA, he litigated a wide variety of felony criminal actions.

Representative experience:

• Defended the USPTO Commissioner as lead briefing attorney in BlackLight Power Inc. v. Rogan, 63 USPQ2d 1534 (CAFC 2002).
• Served as lead attorney on ex parte appeals to the Federal Circuit.
• Litigated disciplinary complaints against patent practitioners on behalf of the Director of USPTO Office of Enrollment and Discipline.

Court Memberships

• Kansas
• Missouri
• U.S. Patent and Trademark Office

Honors

• Selected as Missouri & Kansas Super Lawyer, 2005
• U.S. Patent and Trademark “On the Spot” Award Recipient, 2001
• U.S. Patent and Trademark Special Achievement Award Recipient, 1999

Professional Affiliations

• Kansas Bar Association, IP Section President, 2008-2009
• Wichita Bar Association
• Johnson County Bar Association
• The International Society for Optical Engineering (SPIE)
• Illuminating Engineering Society (IES)
• American Society of Mechanical Engineers (ASME)

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Publications

• 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

• 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
• Presenter, 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
• Presenter, Technology Transfer:  From Lab to Reality, Doing Your IP Due Diligence Along the Way; 2006 ASME International Mechanical Engineering Exposition; Chicago, IL
• Presenter, Five Things People Do to Mess Up Their Patent Rights; National Manufacturing Week; ASME International;  Chicago, IL, 2005 and 2006
• Presenter, The Optical Patent short course; SPIE's Photonics West Conference; San Jose, 2004-2005, and 2006
• Presenter, 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)
• Presenter, Patent Course at LightFair; Las Vegas, 2006