In the April 1, 2026 issue of the Official Gazette, the U.S. Patent and Trademark Office published a new process permitting patent owners to file an early, limited response to a request for ex parte reexamination. 

Since 2025, the Director of the USPTO has implemented new policies that have drastically reduced the number of inter partes review procedures that are instituted by the Patent Trial and Appeal Board. Because of this, practitioners have increasingly turned to ex parte reexamination procedures as a way of challenging patents outside of district court.

The USPTO now appears to be taking steps to help examiners address this influx of ex parte reexamination requests within the 3-month statutory timeline, by implementing a procedure to give the PTO “the benefit of relevant information from the patent owner.” Previously, after a request for ex parte reexamination was filed, the USPTO would decide—on the basis of the request alone—whether it raised a substantial new question of patentability. The patent owner had no opportunity to respond to the request before reexamination was ordered.      

Now, due to “the recent increased volume of ex parte reexamination requests,” the USPTO is allowing patent owners to submit a pre-order paper with information the Office can use to evaluate the reexamination request. Specifically, the pre-order paper is permitted to address the merits of the arguments and facts specifically raised in the request. The paper may not address any § 325(d) discretionary denial issues, nor should it address matters not raised in the request.

The new pre-order response is subject to additional limits, including the following:

• Patent owner pre-order papers are allowed if the request for reexamination was filed on or after April 5, 2026;
• The pre-order paper must be filed no later than 30 days from when the patent owner served the reexamination request, and no extensions to this deadline are permitted;
• The paper is limited to 30 pages, with the page count excluding any supporting declaration; and
• The patent owner must properly serve the paper on the party requesting reexamination and the paper “must reflect service.”

Typically, the party requesting reexamination will not be allowed a reply, but exceptions may be available to address alleged improper arguments or misrepresentations of fact or law. If a pre-order reply is permitted, it is limited to 10 pages.