USPTO Gives Patent Owners New Right to Respond Before Reexamination Begins

On April 1, 2026, the United States Patent and Trademark Office announced a significant procedural change to the ex parte reexamination process. For the first time, patent owners may now submit written arguments to the USPTO before the agency decides whether to order a reexamination of their patent. The new procedure, which applies to all reexamination requests filed on or after April 5, 2026, gives patent owners 30 days and up to 30 pages to make their case that no substantial new question of patentability exists. For business owners who hold patents, this is a meaningful shift that strengthens their ability to defend issued patents from third-party challenges.

What Changed and Why It Matters

Ex parte reexamination is a process that allows any person to ask the USPTO to take a second look at an issued patent based on prior art, such as earlier patents or publications, that the requester believes should have been considered during the original examination. Historically, the patent owner had no opportunity to weigh in until after the USPTO had already decided to order the reexamination. The agency would evaluate the prior art submitted by the requester, determine whether it raised a "substantial new question of patentability," and if so, open a full reexamination proceeding. The patent owner's first chance to respond came only after that decision was made.

The new procedure changes this dynamic. Now, once a patent owner receives notice that a reexamination request has been filed, they have 30 days to submit a paper of up to 30 pages, along with any supporting declarations or evidence, arguing that the cited prior art does not raise a substantial new question. The USPTO will consider this submission as part of its initial determination on whether to proceed with the reexamination.

A Response to Rising Reexamination Filings

The timing of this procedural change is not accidental. Ex parte reexamination filings have surged in recent months. The USPTO recorded 223 filings in the first quarter of fiscal year 2026 alone, putting the agency on pace for nearly 900 filings for the full year. That represents a dramatic increase from the 407 filings recorded in fiscal year 2024 and 495 in fiscal year 2025. The surge is widely attributed to changes in inter partes review practice at the Patent Trial and Appeal Board, where new discretionary denial policies have made it harder to challenge patents through that process. As the IPR path has narrowed, challengers have increasingly turned to ex parte reexamination as an alternative, and the USPTO's new procedure appears designed to ensure that patent owners are not left without a voice as this shift unfolds.

Key Takeaway for Business Owners

For companies that hold patents, this procedural change is a welcome development. The ability to present arguments before a reexamination is ordered means that a patent owner can potentially stop a meritless challenge in its tracks, before the cost and uncertainty of a full reexamination proceeding begin. This is particularly valuable for small and mid-size businesses that may not have the resources to sustain lengthy patent office proceedings. If you hold patents that are central to your products, services, or competitive advantage, make sure your patent counsel is aware of this new procedure and prepared to act quickly if a reexamination request is filed. The 30-day filing window is not extendable, so having a plan in place before a challenge arrives is critical.

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