On April 1, 2026, USPTO Director Squires issued an Official Gazette Notice allowing patent owners a limited amount of time to respond to a request for ex parte reexamination (EPR) before the Office determines whether the request presents a substantial new question of patentability (SNQ). Under this new procedure, within 30 days of being served with an EPR, a patent owner can file a paper up to 30 pages long, explaining to the Office why the EPR does not raise a SNQ. The Notice purports to implement this new procedure to enable the Office to consider input from the patent owner before making an SNQ determination that would start the EPR.
The Notice does not change any existing rules governing the handling of EPRs, nor does the Notice make any new rules in 37 CFR. The Notice does say that if a patent owner opts to file a timely response, the Office will waive the provisions of 37 CFR § 1.530 (statement by patent owner in ex parte reexaminations) and § 1.540 (consideration of responses in ex parte reexamination) that bar patent owner responses before the Office determines whether there is an SNQ.
But nothing currently in the rules permits such a procedure. Or does it?
What About the Rules?
37 CFR § 1.530(a) says (emphasis added):
Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the [SNQ] determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office’s option).
37 CFR § 1.540 says, in pertinent part: “No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.”
These rules seem unequivocal. They do not provide for substantive input from a patent owner before the Office finds an SNQ. But under the new procedure, the Office is waiving the rules to allow a patent owner to file a pre-order paper on the merits of the EPR request. The patent owner does not have to file a petition or pay a fee, but the patent owner must limit the paper to arguing whether there is an SNQ, and not anything outside of the EPR request (e.g. cumulativeness of an EPR request under 35 USC § 325(d)). If the EPR requester wants to respond to the patent owner’s pre-order paper, the requester can file a response up to 10 pages long, but must also file a petition and pay a fee in order to receive a similar waiver.
The waiver to permit patent owner input before the SNQ determination will be effective for proceedings in which an EPR is filed on or after April 5, 2026.
How Extraordinary
Waiver of rules is an extraordinary procedure. 37 CFR § 1.183 says:
In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director’s designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).
The April 1 Notice purports to identify an extraordinary situation arising from the recent increased volume of ex parte reexamination requests, and says, “Should the pre-order papers prove helpful, the Office will consider revisions to the rules.”
Why Is There an Extraordinary Situation?
Last fall’s inter partes review procedures, about which we blogged here, here, here, here, and here, have resulted in a dramatic decrease in IPR filings, and a corresponding increase in ex parte reexamination requests. Staffing at the Office’s Central Reexamination Unit (CRU), which handles EPRs, has decreased significantly over the past year. As a result, it is not surprising that the Office would be concerned about its ability to determine SNQs within three months of EPR filings as the statute (35 USC § 303) requires.
Takeaway – Does This Help Patent Owners As Much As It Helps the USPTO?
An EPR proceeding normally is out of the control of the EPR requester after the EPR is filed. Under existing EPR practice, when the Office finds an SNQ, the patent owner has the option of filing a paper to contest the finding. Patent owners most often decline to do so, because the EPR requester then would have an opportunity to respond, returning some measure of control to the requester.
Under this new procedure, the Office is encouraging patent owners to file a paper in response to the EPR request. But will patent owners want to do this, recognizing that the EPR requester will be able to respond? Possibly. The patent owner can oppose the EPR request before the Office decides whether there is an SNQ. The patent owner gets up to 30 pages, plus declaration evidence if desired. The EPR requester’s response is limited to 10 pages. A patent owner may well consider it sufficiently advantageous to avoid an SNQ altogether that it would make sense to file such a paper. The patent owner may find the limited nature of the EPR requester’s response to represent a sufficiently small risk by comparison.
