USPTO Overhauls Ex Parte Reexamination: Patent Owners Can Now File Pre-Order Responses Before SNQ Determination — Effective April 5

Procedural Basics: Ex Parte Reexamination and the SNQ Standard

Effective April 5, 2026, the USPTO is implementing a new Pre-Order Procedure for ex parte patent reexamination (35 U.S.C. § 302). Under the reform, when a third party files a reexamination request, the patent owner will be notified and given an opportunity to submit a response before the USPTO determines whether a “Substantial New Question of Patentability” (SNQ) exists. This is a significant procedural reform that affects all practitioners engaged in U.S. patent matters.

Ex parte reexamination allows a patent owner or any third party — competitors, research institutions, or individuals — to ask the USPTO to reconsider the validity of an already-issued patent. When a third party files such a request, the USPTO first assesses whether an SNQ exists: a situation in which prior art or other evidence raises a new question about patentability that was not considered during the original prosecution. If an SNQ is found, formal reexamination proceeds; if not, the request is denied.

The Problem with the Old System: Patent Owners Excluded from the Critical Decision

Under the prior procedure, once a third-party reexamination request was filed, the USPTO assessed the SNQ based solely on the request — without any input from the patent owner — and then notified the patent owner of its decision. Patent owners were effectively excluded from participating in a determination that could lead to the invalidation or narrowing of their patent.

Industry groups and patent bar associations had long criticized this asymmetry. The core complaints were that third-party arguments were evaluated one-sidedly without opportunity for patent-owner rebuttal, and that the SNQ standard was applied too loosely, enabling abusive reexamination filings. The concern extended beyond parties facing patent trolls; legitimate operating companies also found the old system procedurally unfair when defending their own patents.

The New Procedure: 30 Pages, 30 Days

Under the new Pre-Order Procedure, once the USPTO receives a reexamination request, it first notifies the patent owner. The patent owner then has 30 calendar days to file a “Pre-Order Paper” of up to 30 pages. The paper may include:

• Arguments that the prior art cited by the requester was already considered during prosecution;
• Explanations of the technical distinctions between the cited prior art and the challenged claims;
• Rebuttals to the requester’s claim-construction arguments; and
• Supporting declarations and other evidentiary submissions.

The USPTO will then assess the SNQ taking both the reexamination request and the Pre-Order Paper into account. The decision on whether to order reexamination will therefore be informed by both sides’ positions from the outset.

Significance: Procedural Fairness and Abuse Deterrence

The most consequential effect of the reform is the enhancement of procedural fairness. By allowing patent owners to participate as parties at the SNQ stage, the USPTO aims to improve the accuracy of SNQ determinations and create a mechanism for early-stage dismissal of reexamination requests lacking substantive merit. This should also accelerate proceedings overall by reducing the number of unmeritorious requests that advance to full reexamination.

The reform is consistent with a broader USPTO initiative to strengthen patent rights and procedural clarity that has been underway since 2023, including updated guidance on § 101 patent-eligible subject matter. The Pre-Order Procedure is a direct extension of that policy direction.

Strategic Implications: New Demands on Both Patent Owners and Challengers

From the patent owner’s perspective, the reform places a premium on having rapid-response capability when a reexamination notice arrives. Thirty days is a tight window, and the content of the Pre-Order Paper will influence the subsequent examination regardless of the SNQ outcome. Large corporate IP departments in particular will need to implement reexamination monitoring systems and establish clear initial-response protocols.

For challengers (third-party requesters), the reform raises the bar for reexamination requests. Because patent owners can now pre-emptively rebut the SNQ arguments, requests built on weak prior-art selection or underdeveloped legal reasoning are more likely to be denied. Challengers will need to invest in more thorough prior-art searches and more rigorous legal analysis before filing. This is a structural shift that will reward well-prepared reexamination filings and penalize boilerplate or tactical submissions.