USPTO Introduces New Pre-Order Procedure for Substantial New Question Determinations in Ex Parte Reexamination

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6

Why it matters

The USPTO announced a new pre-order procedure on April 1, 2026, allowing patent owners to submit a limited 30-page paper within 30 days of service of an ex parte reexamination request, addressing why the request does not raise a substantial new question (SNQ) of patentability. This applies to requests filed on or after April 5, 2026, enabling the Office to consider patent owner input before deciding on reexamination under 35 U.S.C. § 303(a), which previously relied solely on the requester's submission.[1][3][5][9]

Key players include the United States Patent and Trademark Office (USPTO), directed by John A. Squires, who signed the Official Gazette notice; patent owners and third-party requesters in ex parte reexamination proceedings; and law firms like Polsinelli, Akin Gump, Stradling, and others reporting the change. No specific companies or legislation beyond existing statutes (e.g., 35 U.S.C. §§ 302-305) are named.[1][3][5][8]

This stems from a recent surge in ex parte reexamination requests, straining the USPTO's 3-month statutory deadline for SNQ decisions and high institution rate (over 90%), prompting an experimental process to better inform examiners on prior art teachings without addressing § 325(d) denials. The USPTO may revise rules if effective.[1][3][5][6][9]

Newsworthy now as it takes effect today (April 5, 2026), marking the first formal pre-SNQ input for patent owners amid rising filings, potentially reducing unnecessary proceedings and shifting strategy in patent challenges versus alternatives like IPR.[3][5][11]

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