New Ex Parte Reexamination Procedure at USPTO: What Patent Owners and Challengers Need to Know

Why It Matters

By giving owners a voice early in the reexamination process, the USPTO aims to curb its growing caseload and forces challengers to craft stronger, more defensible requests, potentially reducing frivolous reexaminations and preserving patent value.

Key Takeaways

• USPTO adds pre‑order paper stage for ex parte reexamination
• Owners can argue against substantial new question within 30 days
• Challengers must file more comprehensive initial requests
• Responsive paper limited to 10 pages, 15‑day deadline
• Filings surged to 900 annualized, prompting procedural change

Pulse Analysis

The United States Patent and Trademark Office’s decision to insert a pre‑order paper phase into ex parte reexamination reflects a broader trend of rising post‑grant challenges. From 2024 to 2025, filings more than doubled, reaching an annualized 900 requests in the first quarter of FY2026. This surge strained examiner resources and prompted the agency to seek early input from patent owners, hoping to filter out weak challenges before committing to a full reexamination. The new rule, published in the Official Gazette on April 1, 2026, marks the first statutory opportunity for owners to contest the existence of a substantial new question of patentability.

Under the new framework, owners have a 30‑day window to submit a “pre‑order paper” of up to 30 pages, focusing solely on why the cited prior art does not raise a substantial new question. The paper cannot address discretionary denial criteria under § 325(d) or argue the novelty of the teaching, and incorporation by reference is prohibited. This procedural shift forces challengers to anticipate and pre‑empt owner arguments, encouraging more thorough prior‑art analysis and stronger evidentiary support in the initial request. If owners file, challengers may respond with a concise 10‑page rebuttal within 15 days, but must pay the applicable fee, adding a cost consideration to the strategy.

Strategically, the change could dampen the volume of low‑quality reexaminations, preserving the value of existing patents and reducing uncertainty for innovators. Companies will need to allocate resources to draft pre‑order papers quickly, while challengers may invest more heavily in upfront research to avoid costly rebuttals. In the longer term, the USPTO’s move may influence other jurisdictions to adopt similar early‑stage owner participation mechanisms, reshaping the global landscape of post‑grant patent litigation.