USPTO Introduces Pre-Order Submission in Ex Parte Reexamination — Patent Owners Can Now Contest SNQ Before Reexam Is Ordered

The United States Patent and Trademark Office (USPTO) introduced a new procedural mechanism on April 1, 2026, allowing patent owners to contest ex parte reexamination requests before the Director formally orders reexamination to proceed. Known as a “pre-order submission,” the procedure enables patent owners to challenge whether a Substantial New Question of Patentability (SNQ) exists, under 35 U.S.C. § 303(a). The procedure applies to all reexamination requests filed on or after April 5, 2026, with a public comment period open through May 30, 2026.

To understand why this matters, it helps to trace recent developments in U.S. patent validity proceedings. Since the America Invents Act (AIA) took effect in 2011, inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became the preferred vehicle for challenging patents. IPRs proved powerful—often cited as an effective tool against non-practicing entities (NPEs), or “patent trolls.” However, the USPTO progressively expanded its discretionary denial practices, including the Fintiv framework that weighs parallel litigation timelines, and § 325(d) to block repetitive prior art. As IPR became harder to initiate, practitioners turned to ex parte reexamination as an alternative or fallback strategy. According to IP Watchdog, the surge in filings reached levels the USPTO characterized as an “extraordinary situation.”

Under the new procedure, a patent owner may file a paper of up to 30 pages, within 30 days of being served with the third-party reexamination request. No petition or fee is required. The scope of the submission is strictly confined to the SNQ question under § 303(a)—specifically, arguing that the prior art cited in the reexamination request does not raise a substantial new question of patentability that was not already considered during original prosecution. The submission may include declarations and supporting evidence. Patent owners cannot use the paper to request discretionary denial under § 325(d), or to dispute whether cited art is technically “new.”

The requester generally cannot respond to the patent owner’s paper. An exception exists only if the patent owner’s submission contains a material factual or legal misrepresentation—in that limited case, the requester may file a petition (with fee) to contest those specific points. The Director will then weigh the patent owner’s paper when deciding whether an SNQ exists, applying the existing legal standard.

Practitioners have welcomed the procedure as a meaningful “front-end advocacy window.” As National Law Review notes, patent owners previously had no formal avenue to contest the SNQ determination before reexamination was ordered. Once ordered, the full reexamination process was set in motion—often forcing patent owners to expend resources defending claims even against facially weak requests. The pre-order submission offers a structural correction to this asymmetry.

The broader strategic implications are significant. First, the new procedure continues the USPTO’s trend toward stronger patent-owner protections. Second, it may deter the strategic use of ex parte reexamination as an attrition tactic—where parties file repeated requests using marginal prior art to exhaust a patent owner’s litigation resources. Third, by creating real risk that a weak SNQ argument will be rebutted before institution, the procedure may improve the overall quality of reexamination requests.

Critics offer a counterpoint. IP Watchdog has raised concerns that layering restrictions on both IPR and ex parte reexamination effectively insulates questionable patents from meaningful challenge. For accused infringers, particularly those already denied IPR review, ex parte reexamination served as a fallback option. That fallback is now harder to use.

Practical guidance from Foley & Lardner recommends that patent owners build rapid-response protocols ahead of receiving reexamination requests, given that the 30-day window begins on service. Preparing declarations and technical prior art analyses within this window demands proactive coordination between in-house and outside counsel. Wolf Greenfield & Sacks additionally cautions that arguments made in pre-order submissions should be carefully considered for consistency with positions in later stages of reexamination.

The public comment period closes May 30, 2026. Comment submissions from both patent owners and those who challenge patent validity are expected to be significant. The final rule—and any adjustments it introduces—will shape ex parte reexamination strategy for years to come.