Key Takeaway: With the decline of inter partes review (IPR) proceedings and the significant increase in ex parte reexamination (EPR) proceedings, the U.S. Patent and Trademark Office (USPTO) is allowing EPR patent owners to submit a new “pre-order” paper prior to the USPTO’s institution decision. This change gives patent owners significant new opportunities to be heard and potentially avoid a full patent office trial targeting their patent.
Background: EPR Requests
The EPR process begins when a requester submits prior art and supporting arguments asserting that claims of an issued patent present a substantial new question (“SNQ”) of patentability.[i] Historically, USPTO regulations[ii] have prohibited any response or statement by the patent owner in an EPR proceeding prior to the USPTO’s decision on whether to order reexamination.
As a result, the USPTO’s SNQ determination was traditionally made based only on the requester’s filing, without the benefit of the patent owner’s input.
Rule Waiver and Patent Owner Pre-Order Papers
In an April 2026 Office Gazette Notice, the USPTO Director announced he would waive relevant portions of the regulations to permit patent owners to file pre-order papers in EPR proceedings. The purpose of this waiver is to ensure that the USPTO is better informed regarding the argued teachings in EPR requests. The intent is to streamline EPRs in view of the significant increase in EPR filings. However, those using EPRs to attack patents will likely view this as an extra step that will tend to streamline denials, but not institution, of EPRs.
Key features of the new process include:
- Applicability: The new process applies for EPRs requested on or after April 5, 2026.
- Timing and Length: The patent owner’s pre-order paper must be filed within 30 days of service of the EPR request, and is limited to 30 pages excluding any declaration.
- Permissible Scope: The paper may not address:
- matters not raised in the request;
- whether the USPTO should apply discretionary denial under 35 U.S.C. § 325(d); or
- whether the asserted teachings are “new” (this issue is reserved for later stages if EPR is ordered)
The EPR requester may not ordinarily file a response to the patent owner’s pre-order paper. The USPTO may grant an exception, allowing the EPR requester to file a paper in response, if it finds the response addresses alleged misrepresentations of fact or law and is accompanied by a grantable petition under 37 C.F.R. 1.182.
Takeaways for Practitioners
The new pre-order paper provides a significant opportunity for patent owners to be heard. This pre-order paper is the first meaningful opportunity for a patent owner to oppose reexamination at the threshold stage, before the USPTO decides whether a SNQ exists. Practitioners should act quickly to evaluate whether a targeted response could prevent reexamination altogether.
Pre-order papers should be carefully tailored in scope to address whether the asserted teachings would have been considered important to a reasonable examiner, and not whether the references are cumulative or discretionary denial should apply. A paper with arguments outside the permissible scope risks the USPTO refusing consideration.
The USPTO has indicated that it will consider formal rulemaking if the pre-order process proves helpful. Practitioners should monitor future notices and early decisions on guidance on how the USPTO applies the new procedure in practice.
[i] See 35 U.S.C. §§ 302 –303.
[ii] Specifically, 37 C.F.R. 1.530(a) and 1.540.
Subscribe for News and Updates
