The U.S. Patent and Trademark Office will let patent owners answer ex parte reexamination requests before the agency decides whether the filings raise a substantial new question of patentability. The change, announced in an Official Gazette Notice on April 1, 2026 by Director Squires, gives owners 30 days after service of a request to file a paper of up to 30 pages.
The paper is meant to let the patent owner explain why the reexamination request does not warrant moving forward, and the office says it will consider that input before making the threshold determination that starts the proceeding. If the requester wants to answer back, it can file a response of up to 10 pages, but only after filing a petition and paying a fee.
The move matters because it opens a narrow window that the office’s existing rules have long kept shut. Under 37 CFR § 1.530(a), patent owner statements filed before the substantial new question determination are not to be acknowledged or considered, and 37 CFR § 1.540 says nothing beyond the requester’s reply and the patent owner’s statement is considered before examination. The April 1 notice does not rewrite those rules or add any new ones in 37 CFR; instead, it says the office will waive them in qualifying cases under 37 CFR § 1.183, which allows suspension or waiver in an extraordinary situation when justice requires, so long as the petition is accompanied by the fee in § 1.17(f).
Squires said the office is treating the recent rise in ex parte reexamination requests as that extraordinary situation. The notice also draws a line around what the patent owner can raise: only whether there is a substantial new question of patentability, not issues outside the request itself. As one example, the notice points to the cumulativeness of a request under 35 USC § 325(d) as outside that boundary. The waiver takes effect for ex parte reexamination proceedings filed on or after April 5, 2026.
The office is signaling that the change is provisional, not permanent. Squires said that if the pre-order papers prove useful, the office will consider revisions to the rules. For now, the answer to the most practical question is clear: patent owners will get a brief chance to speak before the USPTO decides whether a reexamination should begin, and that chance starts with filings made on or after April 5.
