Subject Matter Eligibility Declarations (“SMEDs”) are declarations submitted under 37 C.F.R. § 1.132 to place factual evidence into the record when responding to a § 101 subject matter eligibility rejection. On December 4, 2025, the USPTO Director issued a memorandum
Volpe Koenig
Volpe Koenig is a publisher specializing in intellectual property law, with a focus on patent law and related regulatory developments. The organization provides analysis and commentary on topics such as inter partes review (IPR) procedures, patent eligibility legislation, and strategic considerations in patent and trade secret protection. Its content often addresses recent changes in patent office rules, case law interpretations, and legislative proposals affecting patent practice. Volpe Koenig's publications serve legal professionals and stakeholders interested in patent litigation, patent office proceedings, and intellectual property strategy.
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The POSITA Under BRI: The Constraint That Keeps “Broad” from Becoming “Anything”
Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that routinely drives avoidable disputes in…
Open Source, Closed Door: Managing Patent Risk in Open Source (OSS)-Driven Products
Introduction: The Paradox of “Free” Software Open-source software (OSS) is the paradoxical infrastructure of the modern economy. It is frequently “free” in price, yet indispensable in value. Cloud computing, container orchestration, continuous integration pipelines, and AI development environments are routinely…
Rethinking Global Patent Strategy: India Belongs on the List
For many U.S. companies, a global patent strategy has traditionally focused on a familiar and possible short list of jurisdictions, including, for example, the United States, Europe, China, Japan, and South Korea. As a jurisdiction for seeking patent protection, India…
New Copyright Office Rule Makes Registering Artworks Easier and More Affordable
The U.S. Copyright Office has implemented a significant procedural change that will benefit visual artists of all kinds. Effective as of February 17, 2026, the Office now offers a new Group Registration for Two-Dimensional Artwork (GR2D) filing option, allowing multiple…
Sharpening the Sword, Exposing the Shield: SDD Practice and the Ironburg “Skilled Searcher” Standard
The terrain of inter partes review (IPR) strategy shifted meaningfully on November 17, 2025. On that date, the USPTO issued a memorandum authorizing voluntary Search Disclosure Declarations (SDDs), positioning them as a pro‑institution factor in IPR and PGR practice. At…
From Shield to Sword: Using Examiner-Considered Art to Beat § 325(d)
In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d). Early PTAB decisions like Becton, Dickinson &…
An Overview of the Patent Eligibility Restoration Act of 2025
The Patent Eligibility Restoration Act of 2025 (PERA 2025) is a proposed amendment to 35 U.S.C. § 101 that establishes clearly defined statutory exceptions to patent eligibility and eliminates all judicial exceptions. Support for PERA 2025 has been somewhat mixed:…
USPTO Proposes New Limits on Inter Partes Review Challenges Under 37 C.F.R. § 42.108
The United States Patent and Trademark Office (USPTO), led by Director John A. Squires, has issued a notice of proposed rulemaking to revise the rules governing inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The…
Choosing Trade Secrets Over Patents? What Recent Cases Mean for Your IP Strategy
As always, the intellectual property (IP) landscape is changing and IP strategy is evolving with it. For years, patents were often considered the primary tool for protecting a company’s innovations. Patents offer relatively straightforward legal rights, with a defined path…