Patent - US Prosecution Timeline

            A common question that our potential clients and clients ask us is how long will it take to prosecute a U.S. patent application.  The answer to this question depends on a number of factors, such as the technology to be patented, and the art unit to which the application is assigned.  According to the USPTO's Performance and Accountability Report for Fiscal Year 2014, the average pending time to the first Office Action is 18.4 months and the average total pending time is 27.4 months.

            Additionally, our clients often ask us when an event will occur during the prosecution of their U.S. patent application.  The following chart is a rough guide hitting on some of the major events in a patent prosecution, and starts from either the filing of a provisional patent application or a non-provisional patent application.

Event	Relative Date based filing of provisional patent application	Relative Date based on filing of non-provisional patent application
File US provisional patent application .	start
File US non-provisional utility patent application, or File PCT application .	1 year after prov. app. is filed	start
US non-provisional utility patent application, and PCT application are published .	18 months after prov. app. is filed	18 months after non-prov. app. is filed
First US Office Action .	30.4 months after prov. app. is filed	18.4 months after non-prov. app. is filed
File PCT national applications in foreign countries	30 or 31 months  after prov. app. is filed – depending on the country	30 or 31 months  after non-prov. app. is filed – depending on the country

- Henry Park

updated first and second paragraphs on 4/25/15

Copyright - An octopus taking photos

     This year, an octopus was trained to take photos of its visitors at the SEA LIFE Aquarium in Auckland, New Zealand.  Who owns the copyright in the photographs taken by the octopus?
 
     A similar situation appeared late last year.  The monkey selfie issue.  British photographer David Slater contended that he owns the copyright in a photograph taken by a monkey.  Wikimedia contended otherwise.

    Before that dispute was litigated, the U.S. Copyright Office released its latest Compendium of U.S. Copyright Office Practices, Third Edition. In that document, the Office stated that it "will not register works produced by nature, animals, or plants" and provided the following example "A photograph taken by a monkey".  See Compendium, Section 313.2. Thus, the Copyright Office's position is that for a work to be eligible for copyright protection it must be created by a human.

     Given the U.S. Copyright Office's position on this issue, it is likely that a court would defer to the Copyright Office and find that photographs taken by an octopus cannot be copyrighted.

- Henry Park

updated on March 31, 2017 to revise last paragraph

USPTO and Java v8 update 40

    According to the US Patent Electronic Business Center representative (agent 41), the US Patent & Trademark Office's PAIR and EFS-Web services are compatible with the latest available release of  Java version 8 update 40.

- Henry Park

Trademark King - Update

     Late last year, Douglas A. Lehocky on behalf of his Indiana business, Trademark King, Inc., filed 152 trademark applications with the USPTO.  Normally, this would not be a noteworthy event.  However, Mr. Lehocky attempted to register brand names (e.g., Dominos.com, KFC.com), sports related marks (e.g., NHL.Com, 2016 Ncaa Final Four Houston), celebrity names (e.g., Warren Buffet, The Rolling Stones), car company names (Infiniti.com, Fiat.com), sale related terms (e.g., Spring Sale, Thanksgiving Sale), and other commercial or descriptive terms. 

     When asked about his business, Mr. Lehocky reported explained that he buys and sells trademarks, and if he trademarks it first, then it doesn’t matter who owns the domain name.  He also reported said that these are my marks and if you don’t think so, you don’t get trademark law.

     Mr. Lehocky's trademark applications currently are being examined, and not surprisingly are being rejected for numerous substantive reasons such as falsely suggesting a connection with persons, institutions, beliefs, or national symbols; being merely descriptive; or failing to function as a trademark.  For example, the "Selection Sunday" mark falsely implies a connection to the NCAA, the "EltonJohn.com" mark falsely implies a connection to the famous singer Elton John, and the "Cyber Sales" mark is merely descriptive and fails to function as an indicator of the source of goods or services.  Additionally, at least one letter of protest has been filed against Mr. Lehocky's applications.

     Mr. Lehocky's applications and responses demonstrate a deeply flawed understanding of trademark law.  For example, in a letter to the USPTO Commissioner for Trademarks concerning his "EltonJohn.com" mark, Mr. Lehocky stated:

Elton John and/or Reginald Kenneth Dwight is a 67 year old living individual that has never trademarked his name due to his ignorance and/or laziness.  According to the law, ignorance of the law is no excuse. Trademark King, Inc. shouldn't need permission from Elton John and/or Reginald Kenneth Dwight because Trademark King Inc. has the right to any trademark, trade name, and domain name that is not trademark.

     As the legal bases for these trademark applications were unsound, it is extremely doubtful that any of Mr. Lehocky's applications will ever register as a trademark.

- Henry Park