By Collin Rose and Keith Harden.
A New “Pre-Order” Submission Allows Patent Owners to Weigh In Before the USPTO Decides Whether to Institute Reexamination
On April 1, 2026, the U.S. Patent and Trademark Office (USPTO) announced a new procedure that gives patent owners an early opportunity to be heard in third-party ex parte reexamination proceedings. For the first time, patent owners may submit a limited paper—before reexamination is ordered—addressing whether the reexamination request raises a Substantial New Question (SNQ) of patentability under 35 U.S.C. § 303(a).
The change, announced in an Official Gazette notice, represents a notable shift in USPTO practice and creates a short but potentially decisive advocacy window for patent owners facing an ex parte reexamination request.
Background: SNQ Determinations in Ex Parte Reexamination
In an ex parte reexamination, the USPTO must decide—within three months of the request—whether the cited prior art raises a “substantial new question of patentability.” If no SNQ is found, reexamination is denied. If an SNQ is found for at least one claim, reexamination is ordered and proceeds before the Central Reexamination Unit.
Historically, this initial SNQ determination was made without any input from the patent owner, even though it often turns on nuanced issues such as whether the cited references actually disclose the alleged teachings, whether those teachings are cumulative of previously considered art, or whether the same patentability issues were already addressed during prosecution or earlier proceedings.
The New Procedure: Patent Owner “Pre-Order” Submissions
Under the new process, a patent owner may file a pre-order paper explaining why the reexamination request does not raise a substantial new question of patentability. The submission is intended to assist the USPTO before it decides whether to order reexamination.
Key elements of the new procedure include a strict 30-day filing deadline from service of the request, a 30-page limit, no fee or petition requirement, and limitations restricting arguments to SNQ issues only. The procedure applies to ex parte reexamination requests filed on or after April 5, 2026.
Limited Ability for Third-Party Requester Responses
A significant feature of the new procedure is that a third-party requester does not have an automatic right to respond to a patent owner’s pre-order paper. This differs from the traditional patent owner statement process, where a requester is expressly permitted to file a reply.
Because requester replies are not automatic under the pre-order procedure, patent owners may view the submission as a strategic opportunity to oppose reexamination without inviting additional requester advocacy. However, exceptions may be granted if a requester files a grantable petition and fee to address alleged misstatements of fact or law.
An Open Question: How Will the USPTO Apply This Discretion?
It remains to be seen how frequently the USPTO will permit requester responses. While the notice suggests such responses should be granted only in limited circumstances, early Office practice will likely determine whether the pre-order paper offers a meaningful strategic advantage over existing options.
Strategic Implications for Patent Owners
The pre-order submission process creates a new front-end advocacy opportunity, allowing patent owners to attempt to stop reexamination before it begins. Patent owners should be prepared to evaluate requests quickly and coordinate positions across prosecution and litigation strategy.
Takeaways Although the substantive standard for ordering reexamination remains unchanged, the new procedure gives patent owners a meaningful opportunity to influence the USPTO’s SNQ determination at an earlier stage—potentially shaping the course of the proceeding or avoiding reexamination altogether.
