Pre-order
Since April, Reexam Examiners Reject More Proposed Grounds, With or Without an Owner Paper
Firms disagree on whether the pre-order paper helps patent owners. ExamPat's analysis finds examiners are turning down proposed grounds nearly twice as often since April, whether or not the owner filed one.
Six months into the USPTO's pre-order procedure, the debate over whether patent owners should use it is louder than ever. The numbers suggest requesters may have a more practical question to answer first.
The procedure and the debate
Since April 5, 2026, a patent owner served with an ex parte reexamination request can file a paper within 30 days arguing that the cited art doesn't raise a substantial new question of patentability. Cooley laid out the mechanics in April: no fee, no petition, and a requester who wants to answer can do so only by petition. (Our earlier playbook covers the details.)
By July, BakerHostetler described a USPTO that was looking harder at requests before opening them, pointing to a request denied after the examiner found the owner's pre-order arguments persuasive. As the firm put it, "the Office may deny the request without even opening the proceeding."
Not everyone sees the paper as a win for owners. Writing in Mondaq on October 8, Novak Druce argued that the procedure may be a trap. The paper can only argue that the art isn't substantial, it previews the owner's merits case to the examiner who will run the reexam, and an order issued anyway tells everyone those arguments weren't enough. The firm's advice: "For most patent owners, the new procedure is best left in the box."
Meanwhile 325(d) keeps doing its own work at the threshold. Quinn Emanuel's October update tracks requests denied for overlap with earlier IPR petitions alongside orders where the examiner found a 325(d) denial inappropriate on the facts.
And on October 16, Unified Patents reported that outright denials have risen for requests filed after April 5, at nearly the same rate whether or not the owner filed a paper. Its conclusion was that the Office's review has become more demanding across the board.
What happens to the requests that get through
Outright denials are only half the picture. Most requests are still ordered, and an order doesn't mean the examiner accepted every ground the requester proposed. An order can find a substantial new question on some combinations of art and reject others.
ExamPat reads every order and records each proposed ground and how the examiner ruled on it. Comparing third-party requests filed since April 5 with those filed from January 2025 through April 4, the share of ordered requests with at least one ground rejected on the merits has nearly doubled.
About 17% of ordered requests filed since April 5 had at least one proposed ground rejected on the merits, nearly double the 9% rate for requests filed from January 2025 through April 4. (Provisional, as of October 27, 2026.)
It isn't the paper that's driving the change. The rate is about the same either way.
16% of ordered requests with an owner pre-order paper had a ground rejected on the merits, compared with 19% where the owner filed nothing. (Provisional, as of October 27, 2026.)
Two checks suggest this is a real shift rather than noise. Requests filed before April 5 but ordered over the same months kept close to the old rate. And the newer requests don't propose more grounds than before. If anything, they propose slightly fewer.
Both figures will move. Many requests filed this summer haven't been decided yet, and we'll update the analysis as orders come in.
Why it matters for requesters
These figures sit comfortably beside Unified's finding. Whether you measure requests turned away entirely or grounds turned away inside an order, the Office looks stricter since April, and the owner's paper doesn't explain the difference. The two measures count different things, so they shouldn't be read as competing numbers.
For requesters, the takeaway is less about the owner and more about the request. A rejected ground isn't fatal when another ground carries the order. But it costs drafting time, it can narrow the claims that go forward, and it hands the owner an examiner's written reasons to quote later. The rejected grounds we read since April are mostly familiar ones: art the examiner viewed as cumulative of what was already considered, references that didn't teach a key limitation, and grounds that weren't proper bases for reexam at all. In a handful of orders, examiners simply declined to analyze grounds that duplicated ones they had already granted.
That points toward fewer, stronger grounds. Lead with the combinations that bring genuinely new teachings to the limitations that matter, explain plainly why each one is new, and think twice before padding a request with variations on the same art. If the owner files a pre-order paper, a short, targeted petition in response may matter more than it used to.
For owners, the data doesn't settle the trap debate. A paper doesn't appear to change how often examiners trim a request, so the case for filing one still rests on whether you have a technical insufficiency argument strong enough to win outright.
Before you file
ExamPat tracks every ex parte reexam request, its pre-order status, and how the examiner ruled on each proposed ground, so you can see how requests like yours have fared since April.