In an Official Gazette Notice signed by USPTO Director John A. Squires, the USPTO has established a new pre-order procedure in ex parte reexamination proceedings, effective for all reexamination requests filed on or after April 5, 2026. Patent owners are now permitted to formally weigh in before the USPTO decides whether a reexamination request raises a Substantial New Question of patentability (SNQ) under 35 U.S.C. § 303(a)—the threshold that must be met before reexamination can be ordered.
Under the prior process, the USPTO made its SNQ determination within the statutory three-month window based solely on the requester’s submission, without any input from the patent owner. The new procedure addresses this asymmetry by permitting patent owners to file a pre-order paper — up to 30 pages, without petition or fee — arguing why the cited prior art teachings do not rise to the level of an SNQ. The USPTO has cited the dramatic recent increase in ex parte reexamination filings (widely attributed to the expanded use of discretionary IPR denials) as the driving force behind this change.
The USPTO has indicated it will consider formalizing this process into the rules if the pre-order papers prove helpful. A related Official Gazette Notice with further changes to reexamination practice is expected to publish on April 26, 2026, with a public comment period closing May 30, 2026.
Key Takeaways
- Patent Owners Now Have a Voice Before Reexamination Is Ordered
Previously, there was nothing a patent owner could do once a third party filed a reexamination request — the USPTO made its institution decision without any input from you. That has changed. If a reexamination request is filed against your patent, your counsel now has the opportunity to proactively argue that the cited prior art does not present a substantial new question, potentially stopping the proceeding before it starts.
- The 30-Day Deadline Is Non-Extendable
Upon receiving service of a reexamination request, counsel must immediately triage the matter. The pre-order paper must be filed within 30 calendar days of service — not 30 days from the filing date — and this period cannot be extended. This deadline falls squarely within the first month of the USPTO’s three-month SNQ determination window, leaving no room for delay.
- Scope of the Pre-Order Paper Is Limited
The pre-order paper must be limited to arguments and facts supporting the position that the cited teachings do not raise an SNQ. Critically, the paper must not include arguments for why the USPTO should exercise discretion under 35 U.S.C. § 325(d) (those arguments are reserved for after the SNQ determination), or arguments that the cited prior art is not “new”.
- Requesters Are Generally Limited in Responding
The Notice imposes a notable asymmetry: third-party requesters may not ordinarily respond to the pre-order paper. Exceptions exist only for addressing alleged misrepresentations of fact or law that materially impede the SNQ determination, and any such responsive paper requires a petition under 37 CFR 1.182 (and fee) and is capped at 10 pages. The requester’s existing right to reply to a patent owner’s statement following an order for reexamination under 37 CFR 1.535 is unaffected.
This procedural change comes in response to a sharp rise in ex parte reexamination filings, driven in part by third parties using reexamination as a fallback after unsuccessful or unfavorable IPR proceedings. While this new procedure gives patent owners an earlier opportunity to be heard, it does not address all of the strategic concerns associated with reexamination being used as a parallel challenge mechanism. We will continue to monitor and advise on further USPTO developments in this area.
This material is provided for informational purposes only and does not constitute legal advice or create an attorney-client relationship. For personalized guidance, please contact the listed attorneys.