In an Official Gazette notice dated 1 April 2026, the USPTO announced a new procedure allowing patent owners to submit a limited “pre order” paper addressing whether a third party ex parte reexamination request raises a Substantial New Question (SNQ) of patentability under 35 U.S.C. § 303(a).
Under the new process, a patent owner may—without a petition or fee—file a paper of up to 30 pages explaining why the prior art teachings cited in the request do not present a substantial new question, before the Office decides whether to order reexamination. The submission must be filed within 30 days of service of the reexamination request, may include a declaration and other supporting evidence, and is limited to SNQ issues only (not § 325(d) discretion). In limited circumstances, the requester may respond by petition (and fee) to address issues such as incorrect representations or other misstatements of facts or law. The USPTO will consider these submissions as part of its initial SNQ determination, while maintaining existing MPEP standards for what qualifies as a “new” teaching.
This new procedure applies in all requests for reexamination filed on or after 5 April 2026.
Practice Point:
Patent owners should now treat the first 30 days after service of an ex parte reexamination request as a critical front end advocacy window—a well targeted pre order paper may stop reexamination before it starts.
