USPTO Introduces Pre-Order Patent Owner Submission in Ex Parte Reexaminations

Ex parte reexamination proceedings now have a new twist: patent owners will have the option to file a pre-order paper before the Office determines whether a substantial new question of patentability (SNQ) has been raised. While a patent-owner statement was previously available after the SNQ determination, this new pre-order paper provides an earlier opportunity to persuade the Office that a request should be denied.

The Office has indicated that, in view of an increase in ex parte reexamination requests, a patent owner may now submit a pre-order paper before the SNQ determination, without petition or fee, to argue that the teachings asserted in the request do not justify finding an SNQ.

Of note, the filing must be made within 30 days of service of the request, the filing deadline is not extendable, and the paper is limited to 30 pages excluding any declaration. The paper must be directed to the threshold SNQ question and should not address issues outside the request, including discretionary arguments under 35 USC § 325(d).

The requester ordinarily does not get a response to the pre-order paper as of right. A requester response is available only in limited circumstances, such as where a patent owner’s paper allegedly includes misrepresentations of fact or law or other improper arguments that materially impede the SNQ determination. Any such response requires a petition under 37 CFR § 1.182 with the applicable fee, must be filed within 15 calendar days of service of the patent owner paper, and is limited to 10 pages.

This new submission is distinct from the traditional patent-owner statement under 37 CFR § 1.530. The ordinary § 1.530 statement remains part of the post-order sequence and is followed by the requester’s reply under 37 CFR § 1.535.

In practical terms, the new procedure gives patent owners a chance to stop reexamination before it begins, rather than having to wait to respond until after the Office has already ordered reexamination. Because there is no requester response as a matter of right, this new pre-order paper also provides patent owners with the potential to have the last word prior to the SNQ determination.

The notice also preserves existing SNQ guidance. The USPTO states that current Manual of Patent Examining Procedure (MPEP) guidance remains in effect: an SNQ must rest on a new teaching, meaning either a noncumulative technical teaching or a new light that escaped earlier review. (MPEP §§ 2216, 2242.)

The Office further states that arguments over whether an asserted teaching is truly “new” should generally not be included in the pre-order paper because of the compressed timeline for the SNQ determination; those issues may still be raised later in a patent owner statement or response after reexamination is ordered. (Official Gazette Notice at 4; see also 37 CFR § 1.530(c).)

While not explicitly stated, it appears that this new pre-order paper is only available for reexamination requests served on or after April 5, 2026. Indeed, the notice states that the automatic waiver of portions of 37 CFR §§ 1.530(a) and 1.540 applies only where the request for reexamination was filed on or after April 5, 2026. That waiver is required to make this pre-order available in the absence of a petition under 37 CFR §§ 1.182 and 1.183. The Office’s notice is not yet in the Federal Register.

STRATEGIC INSIGHT

This notice materially improves a patent owner’s procedural position in ex parte reexamination. The new filing opportunity may allow patent owners to frame the SNQ issue before the Office commits to ordering a reexamination, which could be especially significant where the requester’s cited teachings are cumulative, are being characterized too aggressively, or depend on an overextended reading of the prosecution history. Because requester replies might be uncommon, patent owners may gain a meaningful last-word advantage.

At the same time, the narrow scope of the permitted paper creates potential risk as patent owners could provide early previews on merits arguments, which might then be rejected by the Office. Patent owners might consider keeping the submission focused on procedural flaws that lead to the failure to establish an SNQ and saving substantive arguments for an eventual reexamination. Merits arguments might remain better suited for the post-order phase.

The short nonextendable deadline also means patent owners will have to carefully monitor and docket this deadline to preserve this opportunity. For requesters, the notice suggests that front-end request drafting will matter even more considering the initial filing may now face a targeted rebuttal before institution with little or no opportunity for response.

LOOKING AHEAD

The notice states that should these pre-order papers prove helpful the USPTO will consider formal rule revisions, suggesting that this may be the beginning of a broader recalibration of ex parte reexamination practice rather than a one-off procedural experiment.

What remains to be seen is whether this update proves to be a further extension of the patent-owner friendly considerations that have dramatically changed AIA proceedings under Director Squires. Stakeholders should monitor how often patent owners use the new mechanism, how strictly the Office polices its scope, and whether it affects institution rates in close SNQ cases.

We will continue to monitor USPTO developments affecting patent validity proceedings and would be glad to help assess how this new pre-order SNQ procedure may affect reexamination strategy, patent enforcement, and portfolio risk.