USPTO Introduces Pre-Order Submission Right for Patent Owners in Ex Parte Reexaminations, Effective April 5, 2026

The U.S. Patent and Trademark Office has established a new pre-order paper procedure in ex parte reexamination proceedings, effective for all requests filed on or after April 5, 2026. Under the procedure, announced in an Official Gazette Notice dated April 1, 2026, patent owners may now file a written submission before the USPTO decides whether a reexamination request raises a substantial new question of patentability (SNQ). The change gives patent owners their first formal opportunity to influence the SNQ determination, arriving as ex parte reexamination filings have surged to near-record levels.

Context: A Sharp Rise in Ex Parte Reexamination Filings

Ex parte reexamination allows any third party to ask the USPTO to reexamine a granted patent in light of prior art. If the Office determines that the submitted references raise a substantial new question of patentability, reexamination is ordered. Until now, patent owners had no formal avenue to contest that threshold finding before the order issued.

Filings have climbed sharply. The USPTO recorded 223 ex parte reexamination requests in Q1 FY2026 (October through December 2025) alone, an annualized rate of nearly 900, compared with 407 in FY2024 and 495 in FY2025. The increase has been linked in part to strategic use of the procedure as an alternative to inter partes review (IPR) following the Squires reforms that restricted PTAB access.

The Pre-Order Paper: Key Parameters

Patent owners have 30 days from service of the reexamination request to file a pre-order paper of up to 30 pages at no charge. The paper must demonstrate that the examiner’s cited references fail to present a substantial new question of patentability. Declarations may accompany the paper, but the USPTO evaluates the arguments on their own merits without permitting incorporation by reference.

The 30-day period is strict and non-extendable. Certain topics fall outside the permissible scope: arguments under the § 325(d) discretionary denial doctrine, and arguments about whether a cited reference is genuinely new or noncumulative in the record. Should the patent owner file a pre-order paper, the requester may file a 10-page response under CFR §1.182, limited to correcting legal or factual errors that would distort the SNQ analysis.

Legal Questions Around the Notice Procedure

The new procedure has drawn scrutiny from patent law commentators, including Patently-O, which questioned whether the USPTO can introduce a substantive procedural change via an Official Gazette Notice rather than through notice-and-comment rulemaking under the Administrative Procedure Act. The APA generally requires agencies to publish proposed rules and solicit public comment before they take effect. The USPTO has not publicly addressed this concern, and the procedure’s legal durability may depend on whether it faces a formal challenge.

Practical Implications

Assuming the procedure withstands any legal challenge, patent owners and their counsel face an immediate deadline management issue. The 30-day window begins running on service of the reexamination request and cannot be extended. Given the complexity of SNQ arguments, the time available to assess the situation and prepare a substantive submission is tight.

Three practical points stand out. First, the permissible argument scope is narrow: the paper must focus on whether the cited references raise a genuine SNQ, not on broader validity merits. Second, a strong pre-order paper could prevent reexamination from being ordered entirely, saving significant time and cost. Third, parties filing reexamination requests should anticipate that patent owners will increasingly use this new right.

The pre-order paper procedure, alongside the ongoing contraction of PTAB IPR filings under the Squires-era reforms, is reshaping the procedural landscape for contesting patent validity before the USPTO. How the procedure functions in practice, and whether it withstands administrative law scrutiny, will be closely watched by IP practitioners in the months ahead.