On April 1, 2026, the USPTO issued new steerage establishing a “Pre-Order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings,” signaling additional adjustments to the company’s long-standing practices for correcting errors in issued patents.
Overview of the Guidance
The steerage introduces a brand new briefing choice permitting patent homeowners to deal with a third-party reexamination request earlier than the company decides whether or not to grant or deny it (pre-order). According to the Notice, this pre-order briefing will allow the USPTO to make Substantial New Question (SNQ) determinations with enter from patent homeowners. Submissions have to be filed inside 30 days of service of the request and will not exceed 30 pages. Patent homeowners additionally mustn’t embrace arguments about overlap with earlier company analyses underneath 325(d), that are thought-about later within the course of.
Third-party requestors haven’t any proper to answer the patent proprietor pre-order submitting. Instead, they need to petition primarily based on distinctive circumstances. For instance, the third social gathering could petition to deal with alleged misrepresentations of reality or regulation that might materially impede the SNQ willpower.
Implications for Patent Owners and Third Parties
The steerage carries vital sensible implications for either side:
For Patent Owners:
- The 30-day window to deal with all SNQs in a pre-order temporary and optionally available declaration is tight and expensive.
- Patent homeowners in parallel litigation will probably be reluctant to rapidly preview potential declare development and declare mapping theories in an optionally available PTO submission that would seem at the least 6+ months earlier than any official due date for such filings.
- Where a keep movement is pending or anticipated in a parallel litigation, creating substantial prosecution historical past—and signaling ongoing, energetic PTO engagement—might tip the scales towards a keep.
- The choice could merely supply restricted worth. Over 40 years of statistics present third-party challengers reach presenting SNQs greater than 92% of the time, and this steerage can’t change the statutory SNQ customary—a decrease bar than what applies to rejecting claims later within the reexamination course of underneath the prima facie framework.
- Requestors will doubtless petition to answer any pre-order patent proprietor temporary, arguing mischaracterization—an choice unavailable if the patent proprietor waits till reexamination begins.
For Third Parties:
If pre-order briefing turns into frequent, reexamination will develop into dearer for all events. However, third events could, if the SNQ customary is by some means elevated, must file extra requests for reexamination till profitable.
There is now a strategic incentive to incorporate extra SNQs to discourage or complicate patent proprietor pre-order submissions, additional rising prices for requestors.
- If the company strays from the statutory SNQ customary and easily adopts patent proprietor arguments, the integrity of the reexamination course of could be undermined akin to what has been executed to the PTAB.
We will proceed to observe how the USPTO implements this steerage in apply.
