Insights

It’s a lucky coincidence for Apple that The US Patent and Trademark Office (USPTO) recently granted it a patent for “synthetic group selfies.” This nifty software allows users to create socially distant group selfies, something that could be in high demand during the Covid 19 Pandemic. Apple did not anticipate when it filed for the patent in 2018, but the granting of the patent couldn’t come at a better time. It’s not clear yet if or when Apple will actually be marketing products with this patent that’s officially called “Generation of Synthetic Group Selfies.”

The Patent Trial and Appeal Board’s decision in Apple v. Fintiv, Inc. solidifies the Board’s trend of using its broad discretion towards denying Inter Partes Review (IPR.) The IPR acceptance rate has fallen from 87% percent in 2013 to 55% in 2020, only allowing an IPR to be instituted when there is a “reasonable likelihood that the petitioner would prevail.” In Apple, the Board introduced a six-part test intended to discourage IPR based on the advanced status of the underlying district court case. This new test that is intended to set precedent creates hurdles that may further reduce how often IPR is instituted.

The United States Supreme Court, in United States Patent Office v. Booking.com (2020), held that the Patent Office cannot apply a “per se” rule denying all applications for “generic.com” trademarks. The Supreme Court stressed that the intention was not to open the door to protecting generic terms, but to allow for the introduction of evidence that consumers did not perceive a particular term as generic. Despite the Supreme Court’s initial hostility towards combining two generic terms to create a protectable trademark, it replaced the “per se” standard with a “consumer perception” standard to determine eligibility for trademark protection.