Ex Parte Reexamination Core Change – Patent Owner Gets a Pre-SNQ Shot

DEREK FAHEY, ESQ.

The United States Patent and Trademark Office has implemented a significant procedural change to ex parte reexamination practice. Patent owners may now submit a pre-order paper addressing whether a request raises a substantial new question of patentability before the Office determines whether to institute reexamination for qualifying requests.

1. Procedural Mechanics

A patent owner must file the pre-order paper within 30 days of service of the request. The deadline is non-extendable, and the submission is limited to 30 pages, although declarations may be included without counting toward that limit. No petition or fee is required.

A requester response is sharply limited. It is available only by petition and fee and only in narrow circumstances, such as alleged misrepresentation, with a 10-page limit and a non-extendable 15-day deadline.

2. Substantive Scope

The permissible scope is deliberately narrow. Patent owners may argue and present evidence that no substantial new question exists, including why cited prior art does not undermine conclusions reached during original examination. They may not introduce new issues, seek discretionary denial under §325(d), or turn the filing into a full invalidity or claim-construction brief.

3. Regulatory Framework

The USPTO implemented the change by waiving regulations that previously barred patent-owner participation before institution. The current regime is therefore an administrative solution that may be refined further.

4. Why The Change Matters

For patent owners, the filing creates an early opportunity to prevent reexamination where the asserted art is cumulative, previously considered, overstated, or mischaracterized. That opportunity requires rapid triage and early coordination between prosecution and litigation teams.

For requesters, the initial request must now anticipate a focused rebuttal on the substantial-new-question standard. In parallel litigation, a persuasive pre-order paper—or a denial of a substantial new question—may also influence how the reexamination request is viewed, even though the decision is not binding on a district court.

This is not a cosmetic adjustment. It changes timing, leverage, and advocacy at the institution stage and should be approached as a focused gatekeeping opportunity rather than a forum for full-scale merits briefing.