USPTO Grants Patent Owners a Voice Before Ex Parte Reexamination Orders Under New Pre-Order Procedure

The United States Patent and Trademark Office (USPTO) introduced a new “pre-order paper” procedure for ex parte reexamination proceedings via an Official Gazette Notice signed by Director John A. Squires on April 1, 2026. Effective for all reexamination requests filed on or after April 5, 2026, the procedure gives patent owners a formal opportunity to argue against the initiation of reexamination before the Office determines whether the request raises a substantial new question of patentability (SNQ).

Background: A Surge in Ex Parte Reexamination Filings

Ex parte reexamination is a mechanism by which third parties may challenge the validity of a patent by citing prior art to the USPTO. The Office then determines whether the request raises an SNQ—and if so, orders reexamination. Under the prior framework, patent owners had no formal avenue to weigh in before this threshold determination; they could only respond once reexamination was already underway.

Director Squires cited a “recent increased volume of ex parte reexamination requests” as a primary driver behind the change. USPTO data show 223 ex parte reexamination requests were filed in the first quarter of fiscal year 2026 (October–December 2025), an annualized rate approaching 890—compared to 407 filings in FY2024 and 495 in FY2025.

Practitioners attribute much of this growth to a parallel decline in Patent Trial and Appeal Board (PTAB) inter partes review (IPR) institution rates. The PTAB institution rate for IPR petitions dropped from approximately 65% in October 2024 to roughly 37% by February 2026—a 43% reduction. With IPR increasingly unlikely to result in institution, challengers have turned to the less expensive and examiner-driven ex parte reexamination as an alternative route to invalidating patents.

The Pre-Order Paper: “30 Days, 30 Pages”

Under the new procedure, patent owners may file a pre-order paper of up to 30 pages (excluding any supporting declaration) within 30 calendar days of service of the reexamination request. No petition fee is required, and the 30-day deadline is not extendable.

The paper must be directed squarely at the SNQ threshold question—specifically, why the prior art cited in the request does not raise a substantial new question of patentability for some or all claims under review. The USPTO has specified that pre-order papers may not address discretionary denial arguments under 35 U.S.C. § 325(d), and may not argue whether a prior art teaching is “new” or non-cumulative.

Requesters are generally prohibited from responding to the patent owner’s pre-order paper. An exception exists only where the patent owner alleged misrepresentation of fact or law, or other improper arguments that materially impede the determination of an SNQ. In such cases, requesters may petition under 37 C.F.R. § 1.182 to file a response of up to 10 pages.

Strategic and Legal Implications

The new procedure materially shifts the dynamics of ex parte reexamination strategy. Previously, patent owners had little ability to prevent reexamination from being ordered once a credible request was filed. The pre-order paper now creates an opportunity to forestall reexamination altogether by persuading the examiner—before any order issues—that the cited art fails to raise an SNQ.

At the same time, the procedure has drawn scrutiny regarding its legal basis. The existing regulations governing ex parte reexamination, 37 C.F.R. §§ 1.510–1.570, do not explicitly contemplate a pre-order submission stage. Because USPTO implemented the procedure through an Official Gazette Notice rather than notice-and-comment rulemaking, some practitioners have questioned whether the new procedure rests on a firm regulatory foundation.

Whether pre-order papers will meaningfully reduce reexamination institution rates remains to be seen. As ex parte reexamination volumes continue to rise—driven in part by the decline of IPR as a challenger tool—the utility of the pre-order mechanism for patent owners will become clearer as data accumulate.