A New Path for Patent Owners in Ex Parte Reexams - But What About the Rules?

On April 1, 2026, a new procedure was introduced allowing patent owners to respond to ex parte reexamination requests within 30 days. This response can explain why the request does not raise a substantial new question of patentability. The procedure aims to consider patent owner input before the SNQ determination. Existing rules remain unchanged, but the Notice allows for a waiver of certain provisions that typically bar responses prior to SNQ determinations, raising questions about the compatibility of this new procedure with current regulations.

"Under the new procedure, patent owners have 30 days to file a response to an ex parte reexamination request, explaining why it does not raise a substantial new question of patentability."

"The Notice states that if a patent owner files a timely response, the Office will waive provisions that typically bar responses before the SNQ determination."

"Current rules, specifically 37 CFR § 1.530 and § 1.540, do not allow for any submissions by the patent owner prior to the SNQ determination."

Read at Global IP & Technology Law Blog