Part III: Déjà Vu at the CRU: Early Lessons From the USPTO’s Patent Owner Pre-Grant Paper

This article follows Part I and Part II on the new patent owner pre-grant paper procedure.

The USPTO’s new pre-order patent owner submission appears to be more than a procedural adjustment. In early filings, it is already beginning to function as a focused front-end advocacy tool for patent owners—one that may affect how both patent owners and requesters approach the threshold substantial new question (SNQ) inquiry. Patent owners are using the new mechanism as an opportunity to try to shape—or stop—the proceeding before reexamination is ordered. The initial pattern is already instructive: sophisticated parties do not appear to be using the paper reflexively; instead, they appear to be using it selectively, and with a noticeable emphasis on threshold defects that can give the Office a practical reason to deny a third-party’s request for reexamination.

What the Early Filings Suggest

In our review of 20 ex parte reexamination requests filed between April 6 and April 15, 2026, only three have resulted in patent owner pre-order paper submissions. The sample is limited, the procedure is new, and broader conclusions will require a larger body of filings. Even so, the initial mix is meaningful. The option is available, but patent owners do not appear to be treating it as a routine filing. Instead, the early pattern suggests selective use where the patent owner appears to believe a focused threshold challenge may materially affect the SNQ determination.

Just as important, the substance of the early papers appears highly disciplined. In one matter (90/016,169), the patent owner organized its pre-order paper around a single allegedly dispositive claim limitation and argued that none of the asserted references—alone or in the proposed combinations—disclosed that limitation. The argument was not that every asserted ground failed for every conceivable reason; the argument was that all grounds shared one threshold defect, and that defect was presented as sufficient to defeat SNQ. The paper also invoked the original prosecution history and the original Examiner’s stated rationale for allowance to reinforce why the newly cited art did not materially alter the patentability picture.

That is a notable choice. It reflects a different instinct from the one often seen in later-phase briefing, where parties answer everything. In the pre-order setting, the early papers suggest a more concentrated objective: identify the one issue that gives the Office a clean basis to say the request does not justify opening reexamination. If the goal is to avoid a reexamination order in the first place, rather than preview the entire defense, selectivity may become a strength, not a concession.

A related early development is also worth noting. In 90/016,169, the requester sought and filed a response to the patent owner’s pre-order paper to address what it characterized as material omissions and misstatements in the pre-order paper. The response directly contested the patent owner’s single-limitation theory and argued that the prior art each disclosed the limitation under the proper reading of the claim and specification.

The Themes Emerging from Early Use

Several themes are already starting to emerge.

1. Early papers appear aimed at defeating SNQ—not litigating the full case (e.g., 90/016,169; 90/016,172; 90/016,173).

The USPTO’s guidance contemplates a paper directed to the threshold SNQ inquiry, and the early filings seem to track that instruction closely. Rather than compressing a full invalidity rebuttal into 30 pages, the early papers focus on the kinds of issues that can short-circuit the request at the outset: a missing claim limitation, an incoherent claim-construction premise, a failure to explain the asserted combination, or a procedural defect in how the request is framed. That is a fundamentally different use of advocacy than a post-order merits response.

2. One strong threshold issue may matter more than many weaker ones (most clearly in 90/016,169).

One of the clearest signals from the early record is the use of a single “dispositive” issue across multiple grounds. That is an intuitively powerful way to approach the new paper. It gives the CRU Examiner a straightforward reason to deny a third-party’s request for reexamination without requiring the Office to work through a sprawling set of alternative disputes. If that pattern continues, practitioners may increasingly view the pre-order paper as a vehicle for identifying the cleanest off-ramp from the request—not the most exhaustive catalogue of rebuttal points.

3. Claim construction is already becoming a front-end battlefield (especially in 90/016,172 and 90/016,173).

In other early matters, the emphasis shifted from one dispositive missing limitation to foundational interpretive problems. In particular, the reviewed filings show patent owners attacking the claim construction standard for expired patents, arguing that the request used the wrong interpretive framework, and asserting that the request failed to clearly state how the claims were being interpreted. Those are significant moves. They suggest that patent owners may view the pre-order paper not simply as a place to contest prior-art mapping, but as a vehicle to challenge the legal and interpretive premises on which the request depends.

4. Procedural clarity under 37 C.F.R. § 1.510(b)(2) may become increasingly important (again, particularly in 90/016,172 and 90/016,173).

Two of the early papers reportedly pressed the position that the request did not comply with 37 C.F.R. § 1.510(b)(2) because it failed to state how the relevant claims were being interpreted or otherwise left the Office to reconstruct the actual theory of unpatentability. That kind of argument is particularly well suited to the pre-order stage. It does not ask the Office to resolve every merit issue; it asks whether the request, as filed, gives the Office a sufficient and coherent basis to find that an SNQ has been raised. In a compressed procedure with no automatic requester reply, clarity at filing may now matter more than ever.

5. Hindsight and ambiguity attacks remain central—but in a different posture (as reflected in 90/016,172 and 90/016,173, and to some extent 90/016,169).

The early filings also show patent owners attacking the requester’s motivation-to-combine theory as hindsight-driven or underdeveloped, and arguing that certain references or constructions were being used ambiguously or inconsistently. Those are familiar lines of attack in patent validity disputes, but the procedural posture matters. In the pre-order context, the argument is not merely that the request may ultimately fail after full briefing. The argument is that the request has not done enough, clearly enough, to justify putting the patent through reexamination in the first place.

Why This Matters Now

For patent owners, the strategic significance is apparent. The new paper offers a chance to challenge a third-party’s request for reexamination before the reexamination process formally begins. And the usual absence of a requester response to the paper may make concise, disciplined front-end advocacy unusually important. But the early record also suggests that this may not be a filing to use by default. The strongest apparent uses are targeted, not sprawling. They identify one or two threshold defects that give the Office a practical reason to deny the request, rather than previewing every argument the patent owner might later wish to preserve.

For requesters, the change is equally significant. The front end of the request now faces a more immediate stress test. If patent owners can use a pre-order paper to expose ambiguity, claim-construction instability, weak limitation mapping, or deficient explanation under § 1.510(b)(2), then the quality of the original request takes on even greater importance. Requesters may increasingly operate on the assumption that looseness in theory, terminology, or claim interpretation will be targeted before the Office decides whether to order reexamination.

And for both sides, the new procedure sharpens an early strategic choice: whether the patent owner uses the paper for procedural attacks, merits attacks, or some blend of the two. The initial filings suggest that a hybrid approach may often be the most effective—procedural where the request is unclear or internally inconsistent, but merits-focused where one claim limitation or one prosecution-history point provides a clean threshold path to denial. That approach appears consistent with the USPTO’s stated limits on the paper while still using the procedure in a way that may meaningfully affect the SNQ analysis.

The USPTO’s new pre-order patent owner submission is still in its first phase of use, and the available data remains limited. But even at this early stage, the pattern is clear enough to merit attention: the front end of ex parte reexamination is becoming more contested, more strategic, and more consequential. This discussion reflects opinions about those early developments and is intended only as general information, not as legal advice or a recommendation for any particular situation.

We will continue to publish follow-up articles reviewing any requester replies and Office decisions to see how they used the pre-grant papers in their analysis.