USPTO Introduces Patent Owner Pre-Order SNQ Briefing in EPR

On April 1, 2026, the Patent Office issued an Official Gazette Notice announcing a new procedure that permits patent owners to submit a limited paper regarding whether an EPR request raises a substantial new question of patentability (SNQ) before the Patent Office makes its determination to grant or deny the request under 35 U.S.C. § 303(a).

Under 35 U.S.C. § 303(a), the Patent Office must determine within three months whether a request of EPR raised an SNQ affecting any claim of the patent. This has been done based on the request alone, with the Patent Owner’s statement under 37 CFR 1.530 being allowed only after this determination has taken place.

Starting with requests for reexamination filed on or after April 5, 2026, patent owners may submit a pre-order paper providing information useful to make the SNQ determination without filing a petition or paying a fee. The pre-order paper is subject to several requirements:

• The pre-order paper should be entitled “Patent owner pre-order paper providing information useful in making the SNQ determination.”

• The pre-order paper is limited to 30 pages and must comply with the formal requirements of 37 C.F.R. § 1.52. Patent owners may support the paper with a declaration, which does not count toward the page limit. But the Patent Office will rely on arguments made in the paper itself, and incorporation by reference is not permitted.
• The subject of the pre-order paper is limited to “arguments or facts to support patent owner’s position that, despite the argued teaching(s) in the request, the Office should maintain the decision of patentability made during examination.”
• The pre-order paper should not address matters not raised in the request and specifically should not address why the USPTO should exercise discretion under 35 U.S.C. 325(d), which is taken up after the SNQ determination.
• The pre-order paper is also not intended to replace the patent owner’s statement under 37 CFR 1.530, and as such challenges to a finding that an alleged teaching is new should not be raised in this paper.
• The pre-order paper must be filed no later than 30 days after the service of the EPR petition. This deadline is not extendable.
• The pre-order paper must be served on any third party requester in the manner provided by 37 C.F.R. § 1.248.

A third-party requester ordinarily may not file a response to the patent owner’s pre-order paper, except in limited circumstances, such as to address alleged misrepresentations of fact or law or other improper arguments that materially impede the SNQ determination. If the requester believes an exception applies, it may file a responsive paper subject to the following requirements:

• The responsive paper should be accompanied by a petition and fee under 37 CFR 1.182.
• The responsive paper is limited to 10 pages and must comply with the formal requirements of 37 CFR § 1.52.
• The responsive paper must be filed no later than 15 days after the service of the patent owner’s pre-order paper. This deadline is also not extendable.
• The responsive paper must be served on the patent owner in the manner provided by 37 C.F.R. § 1.248.

The Notice explains that this process is being introduced in response to recent increased volume of EPR requests. In implementing this process, the Patent Office is waiving the requirements of 37 CFR 1.530(a) and the second sentence of 1.540, to allow consideration of this new paper. The Notice states that it may consider revisions to the rules if the pre-order papers prove helpful.