Part IV: Deja Vu at the CRU: Requester Responses, Improper Papers, and § 325(d): Early Front-End Principles in Ex Parte Reexamination

We are now six weeks into the new pre-grant paper and requester petitioner for response era of ex parte reexaminations, as discussed in our series “Déjà Vu at the Cru.”

The new procedure raised a practical question: if a patent owner files a pre-order paper challenging the request, can the requester actually meet the high bar required to respond?

The early answer on requester responses appears to be: probably no.

Four early proceedings under the new rules, Reexam Control Nos. 90/016,169, 90/016,189, 90/016,188, and 90/016,224 appear ex, third-party requesters who sought leave to submit responses to patent owner pre-order papers had the petitions dismissed. The Office held that the accompanying responses had no right of entry and treated the responses as improper papers that were expunged from the USPTO public record. Through these decisions the Office is setting a precedent that requesters cannot merely call something a “misrepresentation,” “omission,” “misstatement,” or “mischaracterization” to bring their response within the exception.

For example, in 90/016,169, the Office concluded that the requester’s alleged mischaracterizations were “mere disagreements over the scope and content of the prior art” and that “routine discourse” did not justify an exception. And in 90/016,189, the Office characterized the requester’s points as disagreement over whether certain SNQs were “based on properly presented grounds of rejection.”

Later petition decisions in 90/016,188 and 90/016,224 reached similar results. In 90/016,188, the requester framed its proposed response as addressing alleged misapplications of design-patent law and mischaracterizations of obviousness rationales. In 90/016,224, the requester argued that the patent owner obscured new art, new combinations, and new rationales. In both, the Office treated the issues as ordinary disagreement rather than a basis to enter a requester response.

The Pre-Order Process Is Not Becoming a Full Adversarial Exchange

The “improper paper” rulings are significant because they show that the Office is actively policing the boundaries of the new procedure. In multiple matters, the Office has denied entry of requester responses, held that those responses have no right of entry, and directed that they be treated as improper papers to be marked “closed” and “non-public” in the IFW. See, e.g., 90/016,169, 90/016,189, and 90/016,224.

But 90/016,188 goes further. There, the Office did not merely dismiss the requester’s petition and expunge the requester’s proposed response it also addressed the patent owner’s June 3, 2026 paper opposing the requester’s petition. The Office held that the patent owner’s paper also had “no right of entry” and was itself an “improper paper” to be expunged from the record. The Office explained that the SNQ notice “does not provide for a patent owner paper opposing a requester petition under 37 C.F.R. § 1.182 for entry of a responsive paper.” It further stated that “[t]here must be a limitation on party iterations of input,” especially given the statutory three-month deadline for determining whether to order reexamination.

The Office is not only limiting requester responses. It is also limiting patent owner follow-on papers after the authorized pre-order paper. In other words, the Office appears to be treating the pre-order procedure as a limited submission mechanism, not an adversarial exchange with reply and opposition papers from both sides.

The Office Is Also Limiting Reexamination After Denied IPR Issuing § 325(d) Denials

Separate from the requester-response petition decisions, the CRU has also issued recent orders denying ex parte reexamination under 35 U.S.C. § 325(d). These decisions involve a different issue: whether the same or substantially the same prior art or arguments were previously presented to the Office.

Since May 15, 2026, the CRU has issued several § 325(d) denials where the same requester had previously presented at least some of the same or substantially the same prior art or arguments to the Office through an earlier AIA proceeding, earlier reexamination, or both. See, e.g., 90/015,967, 90/015,984, and 90/016,174.

These are the first few times it appears the Office is putting teeth to § 325(d) in ex parte reexamination after years of patent owners urging more policing of what they feel is harassment in some instances.

The orders also suggest that merely adding new art, new combinations, or additional explanation may not necessarily avoid § 325(d) if the new request still substantially overlaps with prior Office-presented art or arguments. For example, 90/015,967 involved a requester that had previously pursued both an IPR and a prior ex parte reexamination before filing another reexamination request. The Office denied the later request after finding that it presented at least some of the same prior art or arguments previously presented to and evaluated by the Office.

At the same time, the authors have seen several grants of requests for second reexaminations or reexaminations after IPR, so there is not an absolute bar to reexaminations after other post-grant proceedings if requesters are careful with their strategy and arguments.

Requester Takeaways

For requester responses to patent owner pre-order papers, the requester may have limited ability to answer before the Office decides whether to order reexamination. The request itself should therefore be drafted with foreseeable pre-order paper arguments in mind, including disputes over claim scope, prior-art teachings, cumulative art, and whether the request properly frames an SNQ.

For § 325(d), a requester will need to find new art and argument, substantially different from that at issue an earlier IPR, PGR, or reexamination. And a requester should prepare a detailed discussion about what was previously presented, compare it to the new request, and explain why the current request is materially different.

Requesters may also want to be precise in framing each SNQ. Ambiguity in the request may give the patent owner an opening to characterize the request as relying on an improper ground, unsupported claim construction, cumulative teachings, or previously considered arguments. The early improper-paper decisions suggest that a requester may not be able to count on a later response to correct that characterization.

Patent Owner Takeaways

For patent owners, the early record confirms that the pre-order paper can be a meaningful front-end tool. The most effective papers are likely to focus on threshold defects rather than broad merits disputes.

For pre-order papers, patent owners may benefit from focusing on issues that bear directly on whether the Office should open reexamination: no SNQ, cumulative art, materially missing claim limitations, improper claim construction, prior-art availability, or defects in how the request frames the proposed grounds.

For § 325(d), patent owners have no recourse through these pre-order papers and must rely on Examiners being diligent in policing requesters, which will happen outside the pre-order process.

Finally, patent owners should also be cautious about filing anything after their pre-grant paper. The 90/016,188 decision is an important reminder that the Office may treat unauthorized patent owner papers as improper too. Patent owners have an authorized pre-order paper under the relevant notice. They should not assume that the Office will accept additional papers opposing requester petitions or otherwise extending the pre-order exchange.