USPTO Introduces Pre-Order Patent Owner Submission in Ex Parte Reexamination: A Response to Surging Requests

The United States Patent and Trademark Office (USPTO) has introduced a new procedure allowing patent owners to submit a response before the agency determines whether to order ex parte reexamination. An Official Gazette notice issued by Director Squires on April 1, 2026, established this pre-order submission process effective for all ex parte reexamination requests filed on or after April 5, 2026. The procedural change comes in direct response to a dramatic surge in reexamination filings: the USPTO received 223 ex parte reexamination requests in the first quarter of 2026 alone, more than double the rate seen in prior quarters.

Under the new procedure, a patent owner may file a paper of up to 30 pages explaining why the prior art cited in the reexamination request does not present a Substantial New Question of patentability (SNQ) under 35 U.S.C. §303(a). The submission must be filed within 30 days of service of the reexamination request and may include a declaration and other supporting evidence. Critically, the submission is limited to SNQ issues only and may not address discretionary institution arguments under §325(d). The requester may respond only by petition and fee, and only to correct material misrepresentations of fact or law.

The new procedure represents a significant departure from conventional ex parte reexamination practice, in which the patent owner historically had no opportunity to be heard until after the USPTO had already ordered reexamination. By permitting patent owners to engage at the SNQ determination stage, the USPTO has fundamentally altered the strategic calculus for both patent owners facing reexamination requests and petitioners considering how to challenge patent validity.

The root cause of the surge in reexamination requests is traceable to a sharp decline in Inter Partes Review (IPR) institution rates. According to IPWatchdog’s April 8, 2026 report, the IPR institution rate fell to 28.2% for petitions filed between October 2025 and February 2026, a 43% reduction from prior averages. Beginning in April 2025, the number of IPR denials exceeded grants every month but one. As practitioners found IPR a less reliable pathway for challenging patent validity, many shifted to ex parte reexamination, which carries a substantially lower threshold for institution than IPR.

The April 2026 WilmerHale PTAB/USPTO Update provides additional context. Under Director Squires, the Patent Trial and Appeal Board (PTAB) has issued more than 600 discretionary consideration decisions since a key memo in March 2025, contributing to the elevated denial rate. In the same period, PTAB appeal pendency has improved dramatically, from an average of more than 28 months in May 2025 to just over 9 months as of April 1, 2026. Total pending PTAB appeals stood at 1,866 as of March 31, 2026, down more than 90% from the peak of 26,570 in fiscal year 2012.

Director Squires invoked the waiver authority available under extraordinary circumstances to implement this pre-order submission process without a formal rulemaking. Several practitioners have noted a potential tension with the existing statutory and regulatory framework. As the National Law Review analysis observes, the Official Gazette notice functions as a rule waiver rather than a formal amendment to 37 C.F.R., and its long-term legal durability may depend on whether the USPTO follows through with a notice-and-comment rulemaking. A public comment period on the changes closes on May 30, 2026.

On the strategic implications, Fenwick highlights that a successful pre-order submission could prevent reexamination from being ordered altogether, offering a more decisive advantage than any argument available post-institution. Stradling’s 30 Days, 30 Pages analysis cautions that the compressed timeline and page limit will require patent owners to quickly mobilize technical and legal resources upon receiving a reexamination request, and that early monitoring of competitor filings at the USPTO is now more important than ever.

The structural shift from IPR to ex parte reexamination as the primary tool for third-party patent challenges reflects a broader realignment underway at the USPTO. How PTAB discretionary practice, reexamination procedures, and the Federal Circuit’s own evolving case law interact over the remainder of 2026 will be closely watched by patent practitioners across all technology sectors.