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USPTO Issues Updated Guidance on Patent Reexamination Practice

3 min read

On April 1, 2026, the USPTO issued new guidance establishing a “Pre-Order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings,” signaling further changes to the agency’s long-standing practices for correcting mistakes in issued patents.

 Overview of the Guidance

The guidance introduces a new briefing option allowing patent owners to address a third-party reexamination request before the agency decides whether to grant or deny it (pre-order). According to the Notice, this pre-order briefing will enable the USPTO to make Substantial New Question (SNQ) determinations with input from patent owners. Submissions must be filed within 30 days of service of the request and may not exceed 30 pages. Patent owners also should not include arguments about overlap with previous agency analyses under 325(d), which are considered later in the process.

Third-party requestors have no right to respond to the patent owner pre-order filing. Instead, they must petition based on exceptional circumstances. For example, the third party may petition to address alleged misrepresentations of fact or law that would materially impede the SNQ determination.

Implications for Patent Owners and Third Parties

The guidance carries significant practical implications for both sides:

For Patent Owners:

 

  • The 30-day window to address all SNQs in a pre-order brief and optional declaration is tight and costly.
  • Patent owners in parallel litigation will be reluctant to quickly preview potential claim construction and claim mapping theories in an optional PTO submission that would appear at least 6+ months before any official due date for such filings.
  • Where a stay motion is pending or anticipated in a parallel litigation, creating substantial prosecution history—and signaling ongoing, active PTO engagement—could tip the scales toward a stay.
  • The option may simply offer limited value. Over 40 years of statistics show third-party challengers succeed in presenting SNQs more than 92% of the time, and this guidance cannot change the statutory SNQ standard—a lower bar than what applies to rejecting claims later in the reexamination process under the prima facie framework.
  • Requestors will likely petition to respond to any pre-order patent owner brief, arguing mischaracterization—an option unavailable if the patent owner waits until reexamination begins.

For Third Parties:

  • If pre-order briefing becomes common, reexamination will become more expensive for all parties. However, third parties may, if the SNQ standard is somehow elevated, need to file additional requests for reexamination until successful.

  • There is now a strategic incentive to include more SNQs to deter or complicate patent owner pre-order submissions, further increasing costs for requestors.

  • If the agency strays from the statutory SNQ standard and simply adopts patent owner arguments, the integrity of the reexamination process would be undermined akin to what has been done to the PTAB.

We will continue to monitor how the USPTO implements this guidance in practice. If you have questions or would like to discuss how these changes may affect your patent strategy or ongoing matters, please contact us.

 
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