The U.S. Patent and Trademark Office (USPTO) introduced a significant procedural change that gives patent owners a formal opportunity to defend their patents before an ex parte reexamination may be instituted. Effective for reexamination requests filed on or after April 5, 2026, a new Official Gazette Notice issued by Director John A. Squires allows patent owners to submit a “pre-order paper” explaining why the prior art cited by a challenger does not raise a substantial new question of patentability (SNQ). Previously, the USPTO made this threshold determination based solely on the challenger’s request, without any input from the patent owner.
Under the new procedure, patent owners have a strict, non-extendable 30-day window from the date of service of the reexamination request to file their response. The submission is limited to 30 pages and must focus exclusively on the merits of the SNQ determination, rather than discretionary denial arguments (which are reserved for after if a SNQ has been raised). In a notable advantage for patent owners, third-party requesters are generally not permitted to reply to this pre-order paper, except in limited circumstances involving alleged misrepresentations of fact or law. This change comes as the USPTO faces a surge in reexamination requests, driven in part by a recent decline in the institution rate for inter partes reviews.
