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April 6, 2026
2 minute read
The USPTO recently introduced a new pre‑order procedure that allows patent owners to submit a limited paper before the Office determines whether an ex parte reexamination request raises a Substantial New Question (SNQ) of patentability. For litigation‑sensitive patents, this change has important implications for post‑grant strategy, particularly as challengers increasingly turn to ex parte reexamination as an alternative to inter partes review.
Historically, the USPTO made SNQ determinations based solely on the requester’s submission, often resulting in near‑automatic institution and providing a basis for stay motions in parallel district court litigation. The new procedure permits patent owners to file a pre‑order paper of up to 30 pages within 30 days of service, arguing that the cited prior art does not raise a SNQ. The submission is strictly limited to the teachings asserted in the request, and third‑party requesters generally are not permitted to respond.
From a strategic perspective, the procedure creates a narrow opportunity to block reexamination at the threshold, potentially preserving litigation momentum and reducing leverage for an accused infringer. It also narrows the historical gap between IPR practice—where preliminary responses are common—and ex parte reexamination, which previously offered no comparable early submissions. At the same time, the tight scope of permissible arguments allows patent owners to calibrate their submissions to minimize unnecessary claim‑construction or infringement‑adjacent disclosures that could affect parallel litigation.
Because the 30‑day deadline is not extendable, patent owners with high‑value or actively asserted patents should be prepared to evaluate reexamination requests immediately and coordinate litigation and post‑grant strategy at the outset.
