- with readers working within the Technology industries
- within International Law topic(s)
Overview and Key Takeaway: USPTO Opens Door for Early Patent Owner Advocacy
So far, our EPR Academy series has provided guidance on how to navigate and best leverage ex parte reexaminations ("EPRs") as a patent owner or third-party requester. In this installment, we highlight a significant procedural development that directly impacts early-stage EPR strategy.
On April 1, 2026, the U.S. Patent and Trademark Office ("USPTO") released a notice outlining a new process allowing patent owners to file a pre-order paper rebutting a requester's assertion that an EPR request raises a substantial new question of patentability ("SNQP").
This change introduces, for the first time, a formal mechanism for patent owners to influence the Examiner's SNQP determination before reexamination is ordered.
Background: SNQP as the Gatekeeper to Ex Parte Reexamination
To understand the impact of this change, it is helpful to briefly revisit the role of SNQP in EPR proceedings. "Any person" can file an EPR request, typically either a third-party requester or patent owner.1The newly announced procedure is particularly significant in third-party requested EPRs, where patent owners previously had no opportunity to respond prior to institution.
An EPR request must seek to establish an SNQP.2To satisfy this requirement, the Examiner must find a "a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable" for the request to raise an SNQP.3The question must also be "new," meaning it has not previously been decided by the USPTO or resolved in a final federal court determination of invalidity on the merits.4
If the Examiner determines that an SNQP is raised, reexamination is ordered. At that point—only at that point—the patent owner may participate by filing a patent owner statement within two months, which may include arguments and claim amendments.5The third-party requester may then file a reply within two months of service of that statement.
Critically, prior to this update, patent owners had no opportunity to be heard before the Examiner made the SNQP determination.6]
With that background in mind, we turn to the new process announced by the USPTO.
What's New: Patent Owner Pre-Order Paper Before SNQP Determination
The USPTO's new procedure allows patent owners to voluntarily submit a pre-order paper to inform the Examiner's SNQP determination.7This marks a fundamental shift—introducing an early advocacy opportunity where none previously existed.
The intent is for these papers to "ensure that the Office is better informed regarding the argued teaching(s) in the request."8
Substantive Limits: Narrowly Tailored Rebuttal of SNQP Assertions
The USPTO has made clear that the scope of the pre-order paper is limited.
Specifically, the submission:
- Must be confined to arguments addressing whether the request raises an SNQP;9
- Cannot introduce new issues or arguments not raised in the request; and
- Cannot invoke discretionary denial arguments (e.g., under 35 USC 325(d)).10
In short, the paper is not a vehicle for full merits briefing—it is a targeted rebuttal of the requester's SNQP theory.
Procedural Requirements: Strict Timing and Formatting Rules
In addition to scope, the notice also provides that the pre-order paper must:
- Be thirty or fewer pages;
- Be entitled "Patent owner pre-order paper providing information useful in making the SNQ determination;" and
- Comply with the requirements of 37 C.F.R. 1.52.11
Optionally, patent owners can supplement the pre-order paper with a declaration.12Inclusion of a declaration does not impact the page limit, but only those arguments expressly made in the paper will be relied on by the USPTO.13
In terms of timing, the patent owner must file their pre-order paper within 30 days of the date the third-party requester serves their request on the patent owner, which is not extendable.14The filed pre-order paper must reflect notice of service on the third-party requester, otherwise the USPTO can refuse to consider it.15
Strategic Impact: Early Influence on Institution Decision
The most immediate impact of this procedure is straightforward:
Patent owners can now directly influence whether reexamination is ordered at all.
Previously:
- No patent owner input before SNQP determination.16
- First response came only after institution.17
Now:
- Patent owners can shape the Examiner's understanding at the threshold stage.
- Potentially prevent the reexamination from being ordered altogether.
To make this possible, a properly filed patent owner pre-order paper is a self-executing exception to previous limits on what the Examiner could consider, providing an automatic waiver of 37 C.F.R. § 1.530(a) and § 1.540's second sentence for reexaminations filed on or after April 5, 2026.18
Potential Response: Limited Opportunity for Requester Reply
Filing a pre-order paper also opens the door to allow a third-party requester to file a responsive paper—but only under limited circumstances.19] The notice provides that, ordinarily, the third-party requester does not have the right to file a responsive paper.20 However, third-party requesters can seek an exception to this preclusion.21
The USPTO's notice explains it may grant an exception where the third-party requester seeks to "address alleged misrepresentations of fact or law or other improper arguments that materially impede the determination of a substantial new question."22
In such circumstances, the third-party requester can file a responsive paper, along with a grantable petition and fee.23] The responsive paper must:
- Be ten pages or less;
- Comply with the requirements of 37 C.F.R. 1.52;
- Be served on the patent owner; and
- Filed within fifteen days from service of the patent owner's pre-order paper, which is not extendable.24
Conclusion: A Meaningful Shift in EPR Strategy
Given the novelty of this procedure, it is not clear what effect it will have on EPRs moving forward. However, we will continue to monitor the current state of, and provide meaningful insight on, ex parte reexamination during this ever-changing and exciting time at the USPTO.
If you found this article interesting, and haven't already, be sure to check out the other installments of our EPR Academy series:
- Article 1 provides a high-level introduction to EPR.
- Article 2 walks through the initial steps of the EPR process, from filing a request to issuance of a reexamination certificate.
- Article 3 rounds out our walkthrough of the EPR process, diving into the EPR appeals process.
Finally, keep an eye out for the next three installments in the series:
- Article 4, which will discuss how EPR compares to inter partes review (IPR), post-grant review (PGR), and reissue.
- Articles 5 and 6, which will look at special issues and considerations from the perspective of patent owners and third-party requesters, respectively, in an EPR.
Footnotes
1 35 U.S.C. § 302.
2 MPEP § 2214(II) (9th ed. Rev., Jan. 2024).
3 MPEP § 2242 (9th ed. Rev., Jan. 2024).
4 MPEP § 2242 (9th ed. Rev., Jan. 2024).
5 37 C.F.R. § 1.530(b); see 37 C.F.R. § 1.530(a).
6 37 C.F.R. § 1.530(a).
7 Pre-order Procedure regarding Substantial New Question determination in ex parte Reexamination Proceedings, [forthcoming].
8 Id.
9 Id.
10 Id.
11 Id.
12 Id.
13 Id.
14 Id.
15 Id.
16 37 C.F.R. § 1.530(a).
17 37 C.F.R. § 1.540.
18 Pre-order Procedure regarding Substantial New Question determination in ex parte Reexamination Proceedings, [forthcoming].
19 Id.
20 Id.
21 Id.
22 Id.
23 Pre-order Procedure regarding Substantial New Question determination in ex parte Reexamination Proceedings, [forthcoming]; see 37 C.F.R. § 1.182.
24 Pre-order Procedure regarding Substantial New Question determination in ex parte Reexamination Proceedings, [forthcoming].
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
