30 Days, 30 Pages: USPTO's New Pre-Order Procedure Changes the Ex Parte Reexamination Calculus

The USPTO has announced a new pre-order procedure that, for the first time, gives patent owners a formal opportunity to weigh in before the Office decides whether to order ex parte reexamination. Signed by Director John A. Squires on April 1, 2026, the Official Gazette Notice takes effect for all reexamination requests filed on or after April 5, 2026.

Background and Rationale

Under 35 U.S.C. § 303(a), the USPTO has just three months from the filing of a reexamination request to determine whether a substantial new question of patentability (SNQ) exists. Until now, the Office made that determination based solely on the requester's submission, without input from the patent owner. Director Squires cited the "recent increased volume of ex parte reexamination requests" as a driving factor behind the change, and the Office framed the new procedure as a mechanism to ensure it is "better informed regarding the argued teaching(s) in the request" before making its threshold determination.

The Pre-Order Paper: What Patent Owners Can Submit

Patent owners may now file a paper — titled "Patent owner pre-order paper providing information useful in making the SNQ determination" — without a petition or fee. The paper must be filed no later than 30 days from the date of service of the reexamination request on the patent owner. That deadline is not extendable.

Key content and procedural requirements include:

• The paper is limited to 30 pages and must comply with the formal requirements of 37 CFR 1.52.
• Arguments must focus on why the prior art teachings raised in the request would not establish an SNQ — i.e., why the Office should "maintain the decision of patentability made during examination as to some or all claims."
• The paper should not address discretionary denial arguments under 35 U.S.C. § 325(d); those are addressed after, not before, the SNQ determination.
• Declarations may accompany the paper without counting toward the page limit, but the Office will rely on the arguments in the paper itself — incorporation by reference is not permitted.
• Critically, arguments that the prior art teaching is not "new" (i.e., is cumulative to what was previously considered) should not be included, as the Notice states those arguments are better suited for the patent owner's statement under 37 CFR 1.530 or a response to an Office action.

Third-Party Requester Response Rights Are Limited

The Notice imposes a notable asymmetry: requesters generally may not respond to the patent owner's pre-order paper. The rationale is straightforward — the requester has already filed a submission with no page limitations, and the SNQ determination timeline is tight. Exceptions exist, but only for addressing "alleged misrepresentations of fact or law or other improper arguments that materially impede the determination of a substantial new question." A requester seeking to file a responsive paper must accompany it with a petition under 37 CFR 1.182 (and fee), and any such paper is capped at 10 pages. The new procedure does not affect the requester's existing right to reply to a patent owner's statement following the reexamination order under 37 CFR 1.535.

Waiver of Conflicting Rules

To accommodate the new procedure, the Director has waived 37 CFR 1.530(a) and the second sentence of 37 CFR 1.540 — rules that would otherwise restrict patent owner submissions during the pre-order period — invoking the Director's authority under 37 CFR 1.183 to waive regulations in "an extraordinary situation, when justice requires." No separate petition or fee is needed to obtain this waiver; it applies automatically when a compliant pre-order paper is timely filed.

What This Means in Practice

For patent owners defending against ex parte reexamination requests, this procedure is a potentially meaningful opportunity. The SNQ standard — whether a reasonable examiner would consider the teaching important to patentability, and whether the same question was not previously decided — is the gateway to reexamination. Getting the Office to reject a request at the threshold is far preferable to defending through a full reexamination proceeding.

That said, practitioners should be clear-eyed about the limitations. The 30-day window is tight and non-extendable. The paper's scope is constrained: no §325(d) arguments, no novelty-of-teaching arguments, and no incorporation by reference. Strategic choices about what to include — and what to save for later — will matter. Submitting a paper that wanders outside the permitted scope risks refusal of consideration entirely.

The procedure is explicitly experimental. The Office stated it "will consider revisions to the rules" if the pre-order papers prove helpful, signaling that formal rulemaking could follow.

Takeaway

This is a practical, if modest, win for patent owners facing ex parte reexamination. The procedure gives patent owners a seat at the table before the SNQ determination — something that previously did not exist. Whether it meaningfully shifts outcomes remains to be seen. What is certain is that patent owners and their counsel should now build this window into their reexamination response strategy from day one of service.

The author is part of the Patent Litigation and Post Grant Proceedings Group at Stradling Yocca Carlson & Rauth LLP. For more information about this notice, contact Greg Cordrey at 949.725.4151 or gcordrey@stradlinglaw.com.