← All storiesV · Beyond the IPR

Data insight1 min readEx parte reexamination

Since April 2026, owners get a say before the reexamination order.

For ex parte reexamination requests filed on or after April 5, 2026, the patent owner may file a paper of up to 30 pages, within 30 days of service, on whether the request raises a substantial new question. Two familiar objections are off-limits in it.

Sources checked October 16, 2026

30 / 30pages, and days from service of the request, for the owner’s pre-order paper. Neither limit can be extended.

Before you read

In the new pre-order paper, can the patent owner argue that § 325(d) bars the request?

Part 1 of 3

Thirty days, thirty pages

Until this year, a patent owner usually had nothing to say before the Office decided whether to order reexamination. A 2026 notice changed that.

The new early exchange

  1. 1Day 0The request is servedFor requests filed on or after April 5, 2026.
  2. 2Within 30 daysThe owner’s pre-order paperUp to 30 pages, on whether the request raises a substantial new question. Not extendable.
  3. 3Within 15 days of thatA requester reply, by petitionOnly with a petition under 37 C.F.R. § 1.182 and the fee. Not extendable, and not a reply as of right.
  4. 4ThenThe Office decidesWhether to order reexamination.
Step 1 of 4
The OfficeCourtThe turn

A substantial new question is the threshold for any reexamination: the request must raise an important patentability question the Office hasn’t already considered. The Office waived two rules to allow the paper, citing the recent increased volume of requests.

Part 2 of 3

Two objections that don’t belong

The paper has limits on what it can argue. Some of the strongest objections an owner has must wait for another filing.

The pre-order paper

It can address

  • Whether the request’s technical showing raises a substantial new question
  • The request’s reading of the cited art

It can’t argue

  • That § 325(d) bars the request because the art or arguments were already before the Office
  • That the alleged teaching is not new; that challenge waits for the owner’s statement or a response after an order

The Office still assesses newness itself. The exclusions control where the owner can argue it.

Part 3 of 3

What to do

  • Calendar 30 days from service, with no extension. Assign the paper the day the request arrives.
  • Sort your objections first: technical showing (pre-order paper), newness (later), and repetition under § 325(d) (a different vehicle).
  • Don’t relabel a § 325(d) argument to fit the early paper.

The takeaway

Before spending the first 30 days drafting, decide which objection belongs in which paper.

Sources

  1. S39USPTO, Pre-order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings, 1545 Off. Gaz. Pat. Office 217 (Apr. 28, 2026; applicable to requests filed on or after Apr. 5, 2026). Official source ↗
  2. S13Federal patent statutes, 35 U.S.C. §§ 253(a), 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). Official page ↗
  3. S38USPTO, Manual of Patent Examining Procedure § 2242, Criteria for Deciding Request Filed Under 35 U.S.C. § 302. Official page ↗

Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.

Changes (5)
  • Dated the headline (“Since April 2026”) and kept the April 5, 2026 filing-date cutoff (Muse).
  • Added the exclusions from the notice, from the reviewed note 19: the pre-order paper can’t argue § 325(d), and can’t argue that the cited teaching isn’t new.
  • Restored the Official Gazette citation (1545 O.G. 217), which the original had dropped as unconfirmed; it is cited in the reviewed copy with the official PDF.
  • Glossed “substantial new question,” “service” and the 37 C.F.R. § 1.182 petition.
  • Internal file path removed.
General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.
1 / 3