Naming Names: USPTO Proposes to End Anonymous Ex Parte Reexamination Requests

On Wednesday, July 22, the USPTO has proposed a rule that would, for the first time, require third-party requesters filing for ex parte reexamination to identify all real parties in interest to the Office. Published July 22, 2026 as a notice of proposed rulemaking (Docket No. PTO-P-2025-0545, RIN 0651-AD94), the proposal targets a gap, dating to the AIA’s 2012 estoppel provisions, between the Office’s certification-only practice and the estoppel provisions Congress built into the America Invents Act. Comments are due by August 21, 2026.

Background and Rationale

Under current practice, a third party may file an ex parte reexamination request anonymously. Section 1.501(d) permits prior art citations to be submitted without identifying the submitter, and MPEP 2214 confirms that a registered practitioner may file on behalf of an undisclosed real party in interest. The only check against abuse is the certification requirement of 37 CFR 1.510(b)(6), under which the requester certifies — without disclosing who it actually is — that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 325(e)(1) do not bar the request.

That gap is not new. When the Office adopted the current certification-only rule in 2012, it considered and rejected a companion disclosure requirement after commenters warned of a chilling effect on filings and raised concerns about protecting anonymity. The Office now says the calculus has changed. It is receiving a significant volume of ex parte reexamination requests directed at patents that were already the subject of inter partes review or post-grant review, meaning estoppel exposure is no longer a theoretical concern but a recurring one it cannot verify on anonymous filings.

What the Proposed Rule Requires

New 37 CFR 1.510(b)(7) would require a third-party requester to submit a separate statement identifying all real parties in interest to the reexamination request. Key features:

• Applies only to third-party requesters; a patent owner filing on its own patent is unaffected.
• The statement is filed electronically, according to parameters the Office will publish separately.
• Upon written request, the statement is excluded from the patent and reexamination file and kept confidential as to the public, consistent with 35 U.S.C. 301(e) and 302.
• Confidentiality runs only against the public — not against the Office. The Office will know the real parties in interest even when the patent owner and the public do not.
• A companion amendment to § 1.501(d) preserves anonymity for prior art citations “under this section,” distinguishing those from reexamination requests under § 1.510, which will now require identification.

The Office frames the change as procedural rather than substantive — exempt from notice-and-comment rulemaking under 5 U.S.C. 553(b)(A) as an interpretive or procedural rule — though it is voluntarily accepting public comment. Notably, the Office still classified the action as significant under Executive Order 12866.

The Forward-Looking Piece: PTAB Coordination

The proposal is also designed to work with a pending PTAB rule. Proposed 37 CFR 42.108(e)(5), part of the PTAB Notice of Proposed Rulemaking published October 17, 2025 (90 FR 48335), would preclude institution of an IPR on a claim already found patentable in a prior ex parte reexamination filed by someone other than the patent owner or the patent owner’s real party in interest or privy. A commenter on that proposal pointed out the obvious hole: an anonymous ex parte reexamination filing defeats the Office’s ability to trace privity. Requiring RPI disclosure at the reexamination stage closes that loophole before it opens.

What This Means for Challengers

For clients considering ex parte reexamination as a validity challenge tool, true anonymity from the Office disappears. A requester filing through a registered practitioner to obscure its identity from a competitor or licensing target can still obtain confidentiality as to the public, but the Office itself will know who is actually behind the request. That matters most directly where a client has already run an IPR or PGR to final written decision on related claims — estoppel exposure becomes something the Office will actively verify rather than take on faith from a certification.

Real-party-in-interest and privity determinations remain fact-intensive under governing case law, including Applications in Internet Time, LLC v. RPC Corp., 897 F.3d 1336 (Fed. Cir. 2018), and Taylor v. Sturgell, 553 U.S. 880 (2008). Clients with layered corporate structures, licensing relationships, joint defense arrangements, or third-party litigation funding should expect the RPI statement to require genuine diligence, not boilerplate. Practitioners should also start tracking this alongside the pending PTAB coordination rule: a strategy built on separating the entity that files an ex parte reexamination from the entity that later files an IPR will be considerably harder to execute once the Office has visibility into real parties in interest across both proceedings.

The proposal imposes no new fee and the Office characterizes the added burden as de minimis. The real cost is not monetary — it is the diligence and drafting time needed to get the RPI statement right, and the strategic cost of losing the anonymity that some requesters have relied on as a matter of course.

Takeaway

This is a modest procedural change with real strategic consequences. It does not alter substantive patentability standards, but it closes a disclosure gap that has existed since the AIA’s estoppel provisions took effect in 2012, and it dovetails with a separate PTAB proposal aimed at preventing serial validity challenges through corporate separation. Clients and counsel evaluating ex parte reexamination as a strategic tool — particularly after an unfavorable IPR or PGR outcome — should factor RPI disclosure into that analysis now, before the comment period closes on August 21, 2026.

 

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.