Déjà Vu at the CRU: USPTO Borrows From the IPR Landscape Allowing Patent Owner Pre-Order Arguments

On April 1, 2026, USPTO Director John Squires issued an Official Gazette Notice establishing a new pre-order procedure effective for reexamination requests filed on or after April 5, 2026. Patent owners familiar with the PTAB’s proceedings will find something familiar in the new process – a waiver of the rules that will now allow patent owners to respond to the reexamination request prior to any reexamination order issuing. The new procedure appears to be an attempt to level the playing field during a pre-order window for patent owners so that they can be heard before the Office decides whether to open the door for reexamination. Up until now, the reexamination statute has barred any party from filing any papers before the Examiner made a grant decision.

Patent Owner: A patent owner may file, without a petition or fee, a paper arguing that the prior art teachings cited in the request do not raise a substantial new question of patentability (SNQ). The paper is capped at 30 pages, must be filed within 30 days of service of the request, and is strictly limited to SNQ arguments. The patent owner may also file a declaration of any length that does not cut into the paper’s page limits. But the declaration will not be considered outside of its citations in the paper. Most importantly, no 35 U.S.C. § 325(d) arguments directed to whether the Office should decline to reexamine a patent already considered in a prior proceeding are allowed.

Requester: Mirroring the current pre-institution IPR framework where the petitioner has no reply to a Patent Owner’s Preliminary Response, the reexamination requester has no automatic right to respond to this new paper. But if the requester believes the patent owner has misrepresented fact or law that materially impedes an SNQ determination, it may file a response of up to 10 pages within 15 days of service of the patent owner’s paper. Unlike the patent owner’s paper, the requester’s response must be accompanied by a petition and fee. Neither deadline is extendable.

The USPTO cites a recent increase in ex parte reexamination request volume as straining its ability to make well-informed SNQ determinations within the statutory three-month window. To address this, the Office created a vehicle for patent owner input before that determination is made. The procedure was implemented through a waiver of existing rules with a mechanism the rules reserve for extraordinary situations where justice requires rather than through notice-and-comment rulemaking. The Office has indicated it will consider formal rulemaking only if the procedure proves helpful in practice.

Insights into how both parties may best use this new procedure will follow in our Reexamination, Reissue, and Supplemental Examination Newsletter later this month.