Overview
The USPTO has announced a new procedure allowing patent owners to submit limited input before the Office determines whether an ex parte reexamination request raises a substantial new question of patentability (SNQ) under 35 U.S.C. § 303(a). Historically, the SNQ determination—required to be made within three months of a request—was issued without any patent owner participation. Under the new process, patent owners may now file a short, fee‑free “patent owner pre‑order paper” explaining why the teachings cited in the reexamination request do not warrant revisiting the Office’s earlier patentability determinations. The USPTO has indicated that this change is intended to enable more informed and accurate SNQ determinations in light of the increasing volume of ex parte reexamination requests.
The pre‑order paper is subject to strict procedural limits. It must be filed within 30 days of service of the reexamination request, be 30 pages or fewer, and be limited to arguments and facts addressing issues raised in the request itself. Importantly, patent owners may not argue USPTO discretion under 35 U.S.C. § 325(d), challenge whether the cited art qualifies as a “new teaching,” or raise issues outside the scope of the request at this stage. While third‑party requesters are generally not permitted to respond, a limited 10‑page reply may be filed by petition in exceptional circumstances, such as to address material misrepresentations. Timely and compliant filings automatically trigger a waiver of certain USPTO rules that previously barred early patent owner submissions. The new procedure applies to ex parte reexamination requests filed on or after April 5, 2026.
Notably, Director Squires also signaled that the Office may consider additional formal rulemaking if the new procedure proves effective. In that sense, the pre‑order paper may represent the first domino to fall in a broader recalibration of ex parte reexamination practice. Although the current framework appears tightly focused on patentability—expressly excluding discretionary considerations—it raises broader questions about what could come next. Open issues include whether discretionary denial arguments may eventually play a role in ex parte reexamination, how and when any such arguments might be raised, whether patent owners might attempt to surface discretionary or cumulative arguments through creative use of the pre‑order paper (and how the Office might respond), and whether cumulative‑art considerations under § 325(d) will have an increased impact. Whether additional dominoes fall remains to be seen, but the announcement signals a willingness by the Office to revisit longstanding features of the reexamination process amid broader procedural changes across post‑grant practice.
