Full-Service Law Firm solving complex challenges through bold thinking, precise execution, and shared purpose.

Full Service Law Firm | Michael Best & Friedrich LLP

Specializing in the Intersection of Business &amp; Government

Meet our team of trusted advisors, strategic thinkers, and community builders dedicated to client success.

Learn about our full-service legal and business solutions, designed to address complex challenges for leading organizations across industries.

Access thought leadership, news, and resources to stay informed about the latest trends, legal developments, and industry innovations.

Discover how partnership, bold thinking, and precise execution drive results for clients nationwide.

Explore how our national reach and local expertise support clients across the United States and beyond.

Grow at a firm designed to bring out your best.

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.<div class="passle-featured-image passle-featured-image-position-bottom"><img src="https://images.passle.net/fit-in/400x400/filters:crop(0,44,2121,1187)/Passle/5f6edd8e8cb62a0bec3e5fd2/SearchServiceImages/2026-04-06-20-41-40-996-69d41a843d38ce3322f17418.jpg" alt="Featured Image" /></div>

USPTO Creates Early Advocacy Opportunity in Ex Parte Reexaminations

Related People

Related Capabilities

You may also be interested in these

Lack of Candor Undermines Class Counsel’s Adequacy

Navigating Conflicts of Interest Within the Non-Profit World

Changing EEOC Enforcement Priorities and DEI‑Related Discrimination: What Employers Need to Know