Ex Parte Reexamination Core Change – Patent Owner Gets a Pre-SNQ Shot

The United States Patent and Trademark Office has implemented a significant procedural change to ex parte reexamination practice that warrants close attention from both patent owners and litigation counsel. Patent owners are now permitted to submit a “pre-order paper” addressing whether a request raises a substantial new question of patentability (SNQ) before the Office determines whether to institute reexamination effective for requests filed on or after April 5, 2026.  This marks a meaningful departure from prior practice, where the SNQ determination was made exclusively on the requester’s submission, and it introduces, for the first time, a formal mechanism for patent owners to influence institution at the threshold stage. 

1. Procedural Mechanics (Strict and Non-Extendable)

As a result, the early posture of reexamination proceedings is no longer entirely requester-controlled, and both sides must recalibrate their approach accordingly. From a procedural standpoint, the framework governing this submission is intentionally rigid. A patent owner must file its pre-order paper within 30 days of service of the request, with no extensions available, and the submission is limited to 30 pages, although declarations may be included without counting toward that limit. Notably, no petition or fee is required, which lowers the barrier to participation but heightens the importance of disciplined, efficient advocacy. 

By contrast, any requester response is sharply limited; it is permitted only by petition and fee, and only in narrow circumstances such as alleged misrepresentation, with a 10-page limit and a non-extendable 15-day deadline. These asymmetrical constraints reflect the Office’s effort to preserve administrative efficiency while introducing a targeted opportunity for patent owner input. 

2. Substantive Scope — Narrow by Design

Substantively, the permissible scope of the pre-order paper is deliberately narrow and should be understood as a gatekeeping exercise rather than a merits brief. Patent owners may present arguments and evidence demonstrating that no SNQ exists, including explanations as to why the cited prior art fails to undermine conclusions reached during original examination. However, they are expressly prohibited from introducing new issues, advancing discretionary denial arguments under § 325(d), or engaging in full invalidity disputes or claim construction battles that are reserved for later stages. This constraint is critical; overreaching risks undermining credibility and, potentially, inviting a requester response. Accordingly, effective submissions will be tightly focused, fact-driven, and aligned with the SNQ standard rather than broader validity themes. 

3. Regulatory Workaround for Change

The USPTO has implemented this change by waiving existing regulations, including 37 C.F.R. §§ 1.530 and 1.540, which previously barred patent owner participation prior to institution. This signals that the current regime is, at least for now, an administrative solution rather than a fully codified rule set, and practitioners should anticipate the possibility of further refinement. 

4. Why this Matters

From a strategic perspective, the implications are material. For patent owners, the pre-order paper creates a front-loaded opportunity to prevent reexamination from being instituted, particularly where the asserted art is cumulative, was previously considered, or is being overstated or mischaracterized. In such cases, a concise and well-supported “no SNQ” narrative may be sufficient to dispose of the request at the outset, avoiding the cost and uncertainty of full reexamination proceedings. That said, this opportunity requires rapid triage; in practice, meaningful drafting time is compressed, and early coordination between prosecution and litigation teams will be essential. 

For requesters, including accused infringers, the change places a premium on precision and discipline in drafting the initial request. Submissions must now anticipate and withstand an early rebuttal focused specifically on the SNQ standard, and arguments that are overly expansive or insufficiently tethered to that standard may create avoidable vulnerability. 

In parallel litigation, this development introduces a new strategic inflection point. A persuasive pre-order paper may be leveraged in district court to challenge the strength of a reexamination request or to argue the absence of a substantial question of patentability, while a denial of SNQ – although not binding – may serve as persuasive authority supporting validity. In sum, this is not a cosmetic adjustment; it materially alters timing, leverage, and advocacy strategy at the institution stage, and it should be approached as a surgical opportunity requiring focused, disciplined execution rather than a forum for full-scale merits briefing.

The patent attorneys at The Plus IP Firm help businesses and innovators.  The patent attorneys at The Plus IP Firm have helped numerous clients develop goods and services to increase their market share in highly competitive markets and also challenge invalid patents where needed.  To schedule a free consultation, click HERE.  For more information about Derek Fahey, this article’s author, click HERE.