USPTO's New Ex Parte Reexamination Pre-Order Procedure: A Detailed Analysis of What Changed, Why It Matters, and How It Reshapes Patent Litigation Strategy

On April 1, 2026, USPTO Director John A. Squires signed an Official Gazette Notice establishing, for the first time in the four-decade history of ex parte reexamination, a procedure that permits patent owners to submit substantive briefing before the Office determines whether a substantial new question of patentability exists. The notice, titled "Pre-order Procedure regarding Substantial New Question determination in ex parte Reexamination Proceedings," took effect on April 5, 2026 and applies to all reexamination requests filed on or after that date.

This is not a minor procedural adjustment. It is a structural change to the threshold gatekeeping mechanism of ex parte reexamination — one that has significant implications for patent owners, litigation defendants, and anyone involved in post-grant patent challenges.

Below, I provide a detailed breakdown of the new procedure, followed by analysis of its practical impact on patent litigation strategy.

THE PROCEDURAL FRAMEWORK

Background: The Problem Being Solved

Under 35 U.S.C. Section 303(a), the Director has three months from the filing of a reexamination request to determine whether a "substantial new question of patentability" (SNQ) is raised. If the answer is yes, the Office orders reexamination under Section 304. If no, the request is denied and the requester receives a partial refund.

Until this notice, the SNQ determination was made entirely on the basis of the requester's submission. The patent owner had no procedural mechanism to submit argument, evidence, or briefing before that threshold decision. The patent owner's first opportunity to respond came only after reexamination was ordered — via the patent owner's statement under 37 CFR 1.530, which is filed after the order issues. By that point, the damage is already done: the reexamination proceeding is open, the patent's validity is formally in question, and the patent owner faces months or years of prosecution-style proceedings before the Central Reexamination Unit.

The practical consequence was that the single most important decision in the entire reexamination process — whether to open the proceeding at all — was made on a one-sided record. The requester had unlimited pages to make its case. The patent owner had no pages at all.

Director Squires has now corrected that asymmetry.

What the New Procedure Provides

The notice creates a new filing category: the "Patent owner pre-order paper providing information useful in making the SNQ determination." The paper is subject to the following requirements:

PAGE LIMIT AND FORMAT: The patent owner pre-order paper must be limited to thirty (30) pages or fewer, presented in compliance with the formal requirements of 37 CFR 1.52. Patent owners may support the paper with a declaration, which is expressly excluded from the page limit. However, incorporation by reference is not permitted — all arguments must be made in the paper itself.

CONTENT RESTRICTIONS: The paper must be limited to arguments or facts supporting the patent owner's position that, despite the argued teachings in the request, the Office should maintain the decision of patentability made during examination as to some or all claims for which reexamination is being requested. Critically, the paper must not address matters not raised in the request. Equally critical: the paper must not address why the USPTO should exercise discretion under 35 U.S.C. Section 325(d). The notice explicitly states that Section 325(d) discretion "is taken up after determination of whether there is a substantial new question." Papers that fail to comply with these content restrictions "may be refused consideration."

FILING DEADLINE: The patent owner pre-order paper must be filed "as soon as possible, but no later than the date that is 30 days from the date of service of the request on the patent owner." The notice expressly states: "This time period is not extendable."

NO PETITION OR FEE REQUIRED: The patent owner files this paper as of right. No petition under 37 CFR 1.182 or 1.183 is needed. No fee is charged.

SERVICE: The paper must be served on the third-party requester in the manner provided by 37 CFR 1.248. Papers that do not reflect service may be refused consideration.

The Requester's Limited Right of Response

Because the requester has already filed its request — which has no page limitation — the notice provides that the requester "may not ordinarily file a paper in response to the patent owner pre-order paper."

Exceptions exist, but they are narrow. A requester may file a responsive paper only "to address alleged misrepresentations of fact or law or other improper arguments that materially impede the determination of a substantial new question." To do so, the requester must file the responsive paper accompanied by a grantable petition under 37 CFR 1.182 and pay the associated fee. The responsive paper is limited to ten (10) pages or fewer. Responsive papers that do not meet these requirements "will be refused consideration."

In practical terms, this means the patent owner has the functional equivalent of the last substantive word before the SNQ determination. The requester's ability to respond is gated behind a petition, a fee, a narrow substantive standard, and a 10-page cap — and must be filed within 15 calendar days of service of the patent owner's paper (also non-extendable).

The Legal Mechanism: Waiver Under 37 CFR 1.183

The notice accomplishes this procedural change not through formal rulemaking, but through the Director's authority under 37 CFR 1.183, which permits waiver of certain regulations "in an extraordinary situation, when justice requires."

Specifically, the Director is waiving the provisions of 37 CFR 1.530(a) and the second sentence of 37 CFR 1.540. These are the rules that previously required all patent owner submissions to await the reexamination order. No separate petition or fee requesting the waiver is necessary — if a compliant patent owner pre-order paper is timely filed, the waiver is automatic.

The notice identifies the "extraordinary situation" justifying waiver as the "recent increased volume of ex parte reexamination requests" and the need "to obtain information from the patent owner prior to making a determination regarding whether requester has established a substantial new question."

The notice also signals that this procedure is provisional. The final paragraph of the waiver section states: "Should the pre-order papers prove helpful, the Office will consider revisions to the rules." That language is a clear precursor to formal notice-and-comment rulemaking.

THE DATA DRIVING THIS CHANGE

The surge in ex parte reexamination filings is not speculation — it is documented in the USPTO's own statistics.

Between 2020 and 2024, ex parte reexamination requests were granted at an average rate of approximately 95%, compared with 63% for IPR and PGR petitions. For litigated patents specifically, the SNQ grant rate reached approximately 95% during the January 2015 to July 2022 period, according to a USPTO-published analysis. The overall historical SNQ grant rate across all reexaminations since 1981 is approximately 92%.

Ex parte reexamination filings surged 66.1% from 437 in calendar year 2024 to 726 in 2025 — a pace not seen since the pre-AIA era when 600 to 800 requests per year was common. Q3 2025 alone saw approximately 198 filings, an all-time quarterly record.

This surge is directly correlated with the simultaneous decline in IPR institution rates under Director Squires. IPR institution rates fell from approximately 68% in Q1 2025 to approximately 23% by Q3 2025. Procedural denials at the PTAB surged 630% year-over-year, and Director Squires has discretionarily denied approximately 64% of IPR petitions he has personally reviewed.

The conclusion is straightforward: as IPR became less available, challengers migrated to ex parte reexamination. The nearly automatic SNQ grant rate made reexamination an attractive — and largely undefended — alternative. The new pre-order procedure is the USPTO's response to that migration.

HOW THIS CHANGES THE PATENT GAME

Having practiced patent litigation for over 25 years and tried these cases in district courts across the country, I can say with confidence that this procedure will materially change litigation strategy for both patent owners and defendants. Here is why.

The SNQ Denial Rate Will Increase, and the Magnitude Matters

The historical 92-95% SNQ grant rate reflects a world in which the examiner reviewed only the requester's submission. That submission, with no page limit, was designed to present the most favorable possible framing of the prior art. The patent owner had no opportunity to contextualize, distinguish, or rebut.

That structural advantage is now gone.

With a 30-page brief plus supporting expert declarations — declarations that do not count against the page limit — patent owners can now affirmatively demonstrate why the cited references do not raise a substantial new question. They can show that the alleged "new teaching" is, in fact, cumulative of art already considered during prosecution. They can provide claim construction context. They can submit technical testimony explaining why a reference does not teach what the requester claims it teaches.

Under the existing MPEP guidance at Sections 2216 and 2242, a substantial new question requires that the teaching be "new" — meaning a "new, non-cumulative technical teaching" or a "new light that escaped review during earlier examination." That standard has teeth, but it was rarely applied rigorously when the only submission came from the requester. With adversarial briefing on both sides, expect examiners to apply the SNQ standard with greater scrutiny.

Even a modest decline in the grant rate — from 95% to 85%, for example — would represent a meaningful change in the risk calculus for reexamination requesters.

Strategic and Harassing Reexamination Requests Become Riskier

A significant percentage of ex parte reexamination requests are filed in the context of litigation — often anonymously — as a tool to create invalidity uncertainty, pressure patent owners into reduced settlements, or generate stay arguments in district court. USPTO data shows that approximately 60% of litigated patents settle during reexamination proceedings, compared to only 28% during IPR proceedings. That settlement pressure is a feature, not a bug, for strategic requesters.

The new procedure increases the risk profile of these filings. If a patent owner submits a compelling pre-order paper and the SNQ is denied, the requester has spent the filing fee, disclosed its invalidity theories, and achieved nothing. Worse, the denial itself becomes a data point that strengthens the patent's validity narrative in concurrent litigation. A denied reexamination request is not binding on a district court, but it is the kind of evidence that patent owners will cite — and juries will notice.

For litigation counsel advising defendants on whether to file a reexamination request as part of a multi-front defense strategy, the calculus has shifted. The near-certainty of an SNQ grant that previously made reexamination a low-risk, high-reward tactic no longer holds.

The Asymmetric Briefing Structure Is Deliberate and Consequential

The procedural asymmetry in the notice is striking and, in my view, intentional.

The patent owner receives 30 pages plus unlimited declaration pages, filed as of right, with no fee. The requester's response is limited to 10 pages, requires a petition and fee, must meet a narrow substantive threshold (misrepresentation of fact or law), and must be filed within 15 calendar days.

This asymmetry reflects a policy judgment: the requester already had its opportunity. It filed the request with no page limitation. The pre-order paper is the patent owner's first and only chance to be heard before the threshold determination. The notice is designed to level an imbalanced playing field, not to create parity between the two submissions.

For patent owners and their counsel, the practical implication is clear: the declaration is the most powerful tool in this framework. A well-drafted expert declaration that walks the examiner through the cited references and explains — with technical specificity — why the alleged teaching is not new, is cumulative, or does not actually teach the claimed limitation, can be the difference between an SNQ grant and a denial. Invest in it accordingly.

The 30-Day Window Demands Immediate Litigation Readiness

The non-extendable 30-day deadline from service of the request is both the opportunity and the constraint.

Thirty days is not much time to analyze a reexamination request that may cite dozens of prior art references across multiple independent claims, draft a 30-page brief, prepare a supporting expert declaration, comply with 37 CFR 1.52 formal requirements, and serve the paper on the requester.

For patent owners with high-value patents in active litigation, the time to prepare for this deadline is now — before a request is ever filed. Reexamination readiness should be part of every patent litigation defense plan for asserted patents. That means identifying technical experts, cataloguing prosecution history and prior art already of record, and having outside counsel prepared to mobilize on short notice.

For patent owners with large portfolios — particularly in the NPE, licensing, and patent monetization space — this may require standing relationships with technical experts and a streamlined workflow for rapid-response briefing.

The Section 325(d) Exclusion Is a Tactical Constraint Worth Noting

The notice expressly prohibits patent owners from addressing Section 325(d) discretion in the pre-order paper. This means arguments that the same or substantially similar prior art was previously considered by the Office — the type of argument that often succeeds in IPR discretionary denial — must wait until after the reexamination is ordered.

This is a practical limitation but not necessarily a strategic one. The SNQ standard under MPEP Sections 2216 and 2242 already incorporates a "not previously considered" element: a substantial new question must be based on a new teaching that was not decided in an earlier examination. Arguments that the prior art is cumulative of what was already before the examiner during prosecution are squarely within the scope of a pre-order paper — so long as they are framed as SNQ arguments rather than Section 325(d) discretionary arguments. Drafting discipline will matter.

Patent Valuations and Settlement Dynamics Shift Upward

Consider the cumulative effect of the current USPTO policy environment.

IPR institution rates have been reduced to approximately 20% under Director Squires. PTAB discretionary denials are at record highs. The USPTO tightened certification requirements for anonymous reexamination requests in February 2026. And now, the threshold for ordering ex parte reexamination — already the last broadly available post-grant challenge mechanism — has a new adversarial gatekeeping procedure that favors patent owners.

Every major pathway for challenging an issued patent outside of district court litigation has become harder in the last 18 months. When patents are more durable — when they are harder to invalidate through administrative proceedings — they are worth more. That increased durability flows directly into licensing negotiations, settlement discussions, portfolio valuations, and litigation finance models. Patent owners negotiating licenses or settlements can now point to a post-grant landscape where challengers face meaningful friction at every turn.

This Is a Pilot, and Formal Rulemaking Is Coming

The notice's invocation of 37 CFR 1.183 waiver authority, rather than formal notice-and-comment rulemaking, means this procedure was implemented quickly — likely in direct response to the surge in filings. But the notice itself signals that permanence is the goal: "Should the pre-order papers prove helpful, the Office will consider revisions to the rules."

Practitioners should expect that if the pre-order procedure produces a meaningful number of SNQ denials — or even if it simply provides examiners with useful context that improves the quality of SNQ determinations — the Office will move toward codifying the procedure through formal rulemaking. That rulemaking could expand the procedure (longer page limits, broader content scope) or constrain it (additional requester response rights), depending on public comment and the Office's assessment of the pilot.

PRACTICAL TAKEAWAYS

For patent owners: File the pre-order paper in every case where the reexamination request has arguable weaknesses. The 30-day deadline demands preparation, but the opportunity to stop a reexamination before it starts is unprecedented. Invest in strong expert declarations. Frame arguments around the SNQ standard — new, non-cumulative teaching — and avoid Section 325(d) discretion.

For litigation defendants considering reexamination: Reassess the risk-reward calculus. The near-automatic SNQ grant rate that made ex parte reexamination a reliable tool is no longer guaranteed. A denial at the threshold wastes resources and strengthens the patent owner's position.

For the patent system: This procedure is a welcome correction to a long-standing structural imbalance. The presumption of validity under 35 U.S.C. Section 282 is a statutory mandate, and a procedure that ensures the Office hears from both sides before reopening validity is consistent with that mandate.

The full Official Gazette Notice signed by Director Squires is linked here for those who prefer to read the primary source.

I welcome thoughtful reactions and analysis — particularly from practitioners who have already begun preparing pre-order papers under the new framework.

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