Stop It Before It Starts: Patent Owners Can Now Challenge Reexamination Requests at the Gate

This development marks a fundamental shift in early-stage reexamination strategy and creates a meaningful new advocacy window for patent owners. It also has important implications for third-party requesters developing invalidity strategies outside of district court litigation.

Background

Under 35 U.S.C. § 303(a), the USPTO must determine within three months of receiving a reexamination request whether a substantial new question of patentability has been raised. Historically, this determination was made solely on the basis of the third-party requester's submission, with no opportunity for patent owner input. If the examiner determined that an SNQ was raised, reexamination was ordered, and only then could the patent owner participate by filing a statement within two months that could include arguments and claim amendments.

This procedural change comes at a time when policy initiatives introduced by the USPTO Director have substantially curtailed the number of inter partes review (IPR) proceedings instituted by the Patent Trial and Appeal Board. In light of this, parties seeking to challenge patents are increasingly turning to ex parte reexamination as an alternative strategy, resulting in a sharp increase in filings. The new procedure appears aimed at addressing this growing volume while ensuring higher-quality threshold determinations.

Key Features of the New Procedure

Scope of the Pre-Order Paper: The patent owner's submission is a targeted rebuttal of the requester's SNQ arguments. It must be limited to addressing whether the request raises an SNQ. The paper cannot introduce new issues or arguments not raised in the request and cannot argue for discretionary denial.

Timing: The patent owner must file its pre-order paper within 30 days of the date the third-party requester serves the reexamination request on the patent owner. This deadline is not extendable.

Page Limits: The pre-order paper is limited to 30 pages. Patent owners may optionally also submit a declaration, which does not count against the page limit. However, only arguments expressly made in the paper itself will be relied upon by the USPTO.

Requester's Right of Reply: Ordinarily, the third-party requester will not have the right to file a responsive paper. However, the USPTO may grant an exception where the requester seeks to "address alleged misrepresentations of fact or law or other improper arguments that materially impede the determination of a substantial new question." Any such responsive paper must be 10 pages or fewer, served on the patent owner, and filed within 15 days of service of the pre-order paper.

Applicability to Earlier-Filed Requests: For reexamination requests filed before April 5, 2026, patent owners do not receive the automatic waiver enabling pre-order papers. They may, however, request leave to file by submitting a petition under 37 C.F.R. § 1.183, though such requests are evaluated on a case-by-case basis and are not guaranteed.

Strategic Considerations for Patent Owners

Patent owners should treat this new procedure as a critical early advocacy window. Engaging at this pre-institution stage can meaningfully increase the likelihood of heading off reexamination altogether – and with it, the expense, unpredictability, and risk of forced claim narrowing that a full proceeding entails. To make the most of this opportunity, patent owners should consider the following:

1. Act quickly. Because the 30-day filing window cannot be extended, patent owners should begin assembling their response as soon as they are served with a reexamination request.
2. Focus the submission narrowly. The pre-order paper should make a clear case that the prior art identified in the request does not give rise to a substantial new question. Useful approaches include establishing that the same references or closely analogous teachings were before the examiner during original prosecution – thus negating the "newness" element – and articulating why distinctions in the prior art bear on patentability or why the cited art does not address particular claim limitations.
3. Consider supporting the paper with a declaration. Because declarations fall outside the 30-page cap, they offer a vehicle for placing technical or factual evidence before the examiner under oath.
4. Avoid discretionary denial arguments. The USPTO has indicated that discretionary considerations under 35 U.S.C. § 325(d) are handled in a distinct phase following the SNQ determination, making their inclusion in the pre-order paper inappropriate and a waste of valuable page space.

Strategic Considerations for Third-Party Requesters

For parties pursuing patent challenges through ex parte reexamination, this procedural shift elevates the standard that must be met to secure institution. Requesters should account for the following:

1. Take care that requests rest on prior art and arguments that are truly novel and not duplicative of what was already before the examiner. Because patent owners can now expose gaps in the requester's case before institution, it is critical to conduct exhaustive prior art research and prepare comprehensive claim charts mapping each claim element to the cited references.
2. Recognize that ex parte reexamination retains important advantages. In contrast to inter partes review, ex parte reexamination is not subject to estoppel provisions or filing deadlines – challengers may initiate the proceeding at any stage of the patent's term without waiving the right to raise invalidity defenses in subsequent litigation. The option to file anonymously also persists, enabling challengers to pursue reexamination without revealing their identity to the patent holder.
3. Anticipate the potential for a more adversarial pre-institution dynamic. By enabling both sides to brief the SNQ question, the new procedure brings a more adversarial character to the pre-institution phase and has the potential to screen out less meritorious challenges before they divert agency resources.

Conclusion

The USPTO's new pre-order procedure represents a meaningful shift in ex parte reexamination practice. Patent owners now have an early, structured opportunity to influence whether reexamination proceeds at all, while third-party requesters must account for a more transparent and adversarial threshold review. Both sides should promptly adjust their strategies to account for this development. We will continue to monitor developments in this area as the USPTO implements and refines this procedure.

If you have any questions regarding the new procedure, please contact Adam S. Baldridge, Lea Speed, or any member of the Intellectual Property team.