New Patent Path in Ex Parte Reexams: Are the Rules Clear?
On April 1, 2026, USPTO Director Squires published an Official Gazette Notice changing pre-order practice in ex parte reexamination requests. The Notice gives patent owners a short window to submit substantive arguments before the Office decides if a request raises a substantial new question of patentability.
What the Notice Allows
Patent owners now may file a response within 30 days after being served with an ex parte reexamination request. That paper may run up to 30 pages and may include declaration evidence. The submission must focus solely on whether the request presents an SNQ.
If a requester wants to reply to a patent owner pre-order paper, that reply is limited to 10 pages. The requester must file a petition and pay a fee to receive the same waiver that permits a pre-order response.
Interaction with Existing Rules
The Notice does not amend the Code of Federal Regulations. It does not add new text to 37 CFR. Instead, the Office says it will waive certain provisions to permit early patent owner input.
Under current rules, 37 CFR §1.530 bars patent owner statements before SNQ determinations. Section 1.540 likewise restricts pre-examination submissions. The Notice says the Office will waive those provisions for timely pre-order papers.
Authority for the Waiver
The Office relies on 37 CFR §1.183 to justify the change. That section allows waiver of regulation requirements in extraordinary situations. Petitioners generally must pay the fee in §1.17(f) for petitions under §1.183.
Effective Date
The waiver procedure applies to ex parte reexamination filings made on or after April 5, 2026. Papers filed under the new practice must comply with the content limits stated in the Notice.
Reasons for the Shift
The Notice cites an extraordinary situation created by changing post-grant practice. A decline in inter partes review filings last fall coincided with a marked rise in ex parte reexamination requests. The Central Reexamination Unit has seen staffing drops in the past year.
The USPTO is concerned about meeting the statutory three-month deadline under 35 U.S.C. §303 for SNQ determinations. The Office says early patent owner input could streamline decision-making.
Practical Impact for Parties
The new path alters a long-standing strategic dynamic. Historically, once an ex parte reexamination is filed, the requester loses active control. Patent owners rarely file pre-order challenges because a post-SNQ challenge gives the requester an opportunity to respond.
Under the new procedure, patent owners can try to prevent an SNQ finding. They gain up to 30 pages to argue the merits. Requesters face a 10-page limit to reply, and need a petition plus fee to take that option.
Limits on Argument
The Notice restricts pre-order papers to SNQ issues only. Arguments outside the EPR request’s merits are not permitted. For example, cumulative-request arguments under 35 U.S.C. §325(d) are off-limits in the pre-order submission.
What Comes Next
The Office indicates it will monitor the new practice. If pre-order papers prove helpful, rule changes may follow. Filmogaz.com will continue tracking developments in New Patent Path developments and Ex Parte Reexams practice as the USPTO evaluates whether the rules are clear and workable.
