Under a new procedure, announced in an Official Gazette Notice dated April 1, 2026, patent owners may now provide input before the United States Patent and Trademark Office decides whether to initiate an ex parte reexamination proceeding. Previously, while patent owners could participate after reexamination was ordered, they had no opportunity to submit arguments before the Office determined whether a request raised a substantial new question of patentability (SNQ). Under the new policy, patent owners may submit a limited pre-order paper to inform that threshold determination.

Ex parte reexamination is an administrative mechanism that allows third parties to challenge patent validity outside of court. Unlike inter partes review and post-grant review – both adjudicated by Patent Trial and Appeal Board judges – ex parte reexaminations are handled by the Central Reexamination Unit and initiation there turns on whether or not the request raises an SNQ.

The new procedure introduces an optional patent owner pre-order paper that must be filed within 30 days of service of the reexam request, with no extensions available. The submission is limited to 30 pages and must focus on why the cited prior art does not raise an SNQ. Supporting declarations are permitted and do not count toward the page limit, but incorporation by reference is not allowed.

The notice also places important limits on the scope of these submissions. The patent owner’s paper must be directed only to the issues raised in the request and should not address matters outside that scope. For example, the Office indicates that arguments regarding discretionary denial under 35 U.S.C. § 325(d) are not part of the SNQ determination and therefore should not be included.

Requesters have limited ability to respond to a patent owner’s pre-order paper. While responses are not ordinarily permitted, a requester may petition to file a reply (limited to 10 pages). Any such reply must be filed within 15 days of service of the patent owner’s paper and requires payment of a fee.

These changes may shift the dynamics of ex parte reexamination practice. Historically, institution decisions were made based solely on the requester’s submission. The new procedure allows patent owners to present arguments earlier in the process, potentially assisting the Office in evaluating whether the request satisfies the SNQ standard before ordering reexamination.

For challengers, this change increases the importance of the initial request. Requests should be drafted with the expectation that the patent owner may respond before institution and that opportunities to reply will be limited.