TAKEAWAY: The USPTO’s new pre-order paper procedure gives patent owners an early opportunity to advocate against ordering ex parte reexamination.
Ex parte reexaminations provide the ability for a party to challenge validity of a patent by presenting a substantial new question of patentability (SNQ). Normally, the USPTO examines an ex parte reexamination request on its own to determine whether the SNQ threshold has been met to proceed with reexamination. On April 1, 2026, the USPTO published a notice outlining a new pre-order paper procedure, which applies to requests was filed on or after April 5, 2026. Under the procedure, the patent owner may file comments in a pre-order paper to provide information useful to the USPTO’s SNQ determination.
A recent determination involving U.S. Patent No. 8,677,398 (Reexam Application No. 90/016,224), illustrates the potential impact of patent owners using this procedure. Following the filing of a third-party reexamination request, the patent owner filed a pre-order paper arguing that the SNQ threshold was not met. The patent owner argued the asserted prior art and issues substantially overlapped with matters already considered during an earlier reexamination proceeding and by the Patent Trial and Appeal Board in several inter partes review proceedings.
The USPTO denied the reexamination request, and stated in the decision that the pre-order paper “has been considered.” Although the decision did not say the USPTO adopted the patent owner’s arguments or explain how much weight it gave them, overlap is notable. The patent owner argued that the request relied on theories in which the cited prior art did not meet the claim limitations, and the USPTO denied reexamination on similar grounds.
That said, the pre-order paper procedure does not change the underlying SNQ standard. The USPTO may still order reexamination if the request presents a new, noncumulative teaching that a reasonable examiner would consider important.