Effective April 5, 2026, the USPTO introduced a "pre-order" procedure for ex parte reexaminations, allowing patent owners to respond within 30 days of service of a request, and before the Office decides whether a Substantial New Question of patentability (SNQ) exists.
On its face, the 30-page, fee-free submission appears to offer an opportunity to prevent reexamination at the threshold. But for patent owners and in-house counsel, the fine print reveals significant constraints. In practice, the procedure forces patent owners to argue their case early, in front of the same examiner who will conduct the reexamination, yet the rule explicitly bars certain arguments that could be most important.
For most patent owners, the new procedure is best left in the box.
THE SNQ STANDARD AND THE CONSTRAINTS OF THE NEW RULE
In a pre-order submission, arguments are strictly limited to whether an SNQ exists. The SNQ requirement generally has two components:
- A "substantial" requirement: whether a reasonable examiner would consider the prior art important to claim patentability.
- A "newness" requirement: whether the prior art (or the question it raises) was previously considered by the Office in an earlier examination or review.
Crucially, the USPTO's April 2026 Official Gazette Notice restricts what patent owners can argue in the pre-order window.
First, the notice states that patent owners cannot argue that an alleged teaching is not "new." Those arguments must be reserved for a patent owner's statement or response to an Office action after reexamination is ordered.
Second, the paper cannot address why the USPTO should exercise its discretion to deny the request under 35 U.S.C. 325(d) (which allows the Director to reject petitions that raise the same or substantially the same prior art or arguments previously presented to the Office).
WHY "SUBSTANTIAL" ARGUMENTS ARE A POOR FIT FOR THE PRE‑ORDER STAGE
With "newness" and 325(d) arguments off the table, patent owners have only one option in the pre-order submission: challenging the "substantiality" of the prior art.
To do this, a patent owner must argue that an examiner would not consider the prior art important to the patentability of the claims. That usually means showing where the prior art fails to teach specific claim elements or pointing out mischaracterizations in the requester's explanations.
These are the core arguments on the merits that a patent owner would typically make later in the proceeding if reexamination is ordered. Because the examiner who decides whether to institute reexamination will also conduct the reexamination, using the pre-order procedure means presenting the same "substantiality" arguments to the same decision-maker twice.
There is a real risk that the examiner will be less receptive to those arguments during the actual reexamination after having already rejected them at the SNQ institution stage.
WHAT ABOUT PETITIONING THE DIRECTOR?
Because 325(d) and "newness" arguments cannot be raised in the pre-order paper, a patent owner could theoretically file a separate petition directly to the Director, arguing that the art is not new. However, these petitions have historically had a very low grant rate. They consume time and resources without a high likelihood of stopping the proceedings.
BOTTOM LINE FOR IN‑HOUSE TEAMS AND PATENT OWNERS
The new pre-order submission is not a default step in an ex parte reexamination strategy. Because the USPTO explicitly prevents patent owners from raising "newness" or 325(d) arguments at this stage, the procedure effectively forces you to preview your substantive technical defenses just to clear the low "substantiality" hurdle. That is, if patent owner puts their best arguments forward regarding "substantiality" but the examiner still finds an SNQ and institutes the ex parte reexamination, implicitly the examiner is finding that patent owner's arguments are lacking. That is a bad thing because it is almost certainly those same arguments that patent owner will be reasserting during the reexamination's prosecution, but they have already been deemed insufficient by the examiner.
If your strongest arguments are about "substantiality," it is almost always better to reserve them for the reexamination itself, where you have a full opportunity to develop the record and amend claims if necessary.
- If you have strong "newness" arguments, you are procedurally barred from using them in the pre-order paper anyway.
For in-house counsel, the takeaway is simple: do not treat the pre-order submission as a free shot on goal. In most cases, the smartest strategic move is to hold your fire until the reexamination is ordered.
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.
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