New USPTO Rule Gives Patent Owners a Voice Before Reexamination Begins

On April 1, 2026, USPTO Director Squires signed an Official Gazette Notice announcing a significant procedural change for patent owners: for the first time, patent owners will have the opportunity to argue against a third-party request for ex parte reexamination before the Patent Office decides whether to move forward with the proceeding. The new rule, effective for all reexamination requests filed on or after April 5, 2026, addresses a longstanding concern among patent holders who previously had no voice in the early stages of a process that could put their patents at risk.

How Ex Parte Reexamination Worked Before

Ex parte reexamination is a process that allows any person, including competitors, to ask the USPTO to take a second look at an issued patent based on prior art that allegedly raises a "substantial new question of patentability," often abbreviated as SNQ. If the USPTO determines that an SNQ exists, it orders reexamination, and the patent owner must then defend the validity of their claims through a formal proceeding. Until now, the decision about whether to order reexamination was made entirely based on the requester's submission. The patent owner had no opportunity to weigh in before the USPTO made that threshold determination. For many patent holders, this meant that a competitor could trigger a costly and time-consuming proceeding without the patent owner ever having a chance to explain why the cited prior art did not actually raise a genuine question.

What the New Procedure Allows

Under the new procedure, a patent owner may file a paper of up to 30 pages within 30 days of being served with a reexamination request. This submission can argue that the prior art cited in the request does not present a substantial new question of patentability and may include declarations and other supporting evidence. Importantly, no petition or fee is required to make the submission. The filing is limited to SNQ-related arguments, meaning the patent owner cannot raise other procedural objections at this stage, but it gives them a meaningful opportunity to prevent the reexamination from being ordered in the first place. In limited circumstances, the party that filed the reexamination request may respond by petition, but the default is that the patent owner gets the first and primary say.

Key Takeaway for Business Owners

This procedural change is a welcome development for any business that holds patents. Reexamination requests have long been used as a strategic tool by competitors seeking to destabilize a rival's patent portfolio, sometimes as leverage in licensing disputes or as a way to create uncertainty around an otherwise strong patent. The ability to respond before the USPTO decides whether to proceed gives patent owners a front-end opportunity to stop unwarranted challenges before they become full proceedings. For business owners, the practical implication is clear: if you receive notice that a third party has filed a reexamination request against one of your patents, you now have 30 days to act. Working with a patent attorney to prepare a focused, well-supported response within that window could mean the difference between shutting down a meritless challenge early and being drawn into months of costly reexamination proceedings.

The new rule also serves as a reminder that patent strategy does not end when a patent is granted. Monitoring your patents for potential challenges, maintaining strong prosecution records, and being prepared to defend your claims are all part of managing a patent portfolio effectively. The USPTO's decision to give patent owners a seat at the table in the reexamination process reflects a broader recognition that the system works best when both sides have a fair opportunity to be heard.

Want to learn more about protecting your patents from reexamination challenges? Schedule a free consultation with Diorio IP Law Group to discuss your options.