How to Use the USPTO’s New 30-Day Pre-Order Response to Defend Your Patent
Authored by Babak Akhlaghi on May 29, 2026. On April 1, 2026, the USPTO made a procedural change that most people outside patent law will never hear about.
But if you’re a founder who’s built a company around proprietary technology, this might be the most important shift in patent defense you’ll see in your career.
For the first time in over a decade, patent owners can now respond before the USPTO decides whether to institute an ex parte reexamination.
You get 30 days. You get 30 pages. And you get the last word before the agency commits to ordering a full challenge to your patent.
This matters because the landscape just fundamentally shifted.
The Context: Why Challengers Pivoted to Ex Parte Reexamination
Let me walk you through what happened.
When the USPTO effectively closed the door on easy IPR challenges in 2025, patent challengers didn’t stop. They pivoted.
IPR institution rates collapsed from 68% in 2024 to under 40% by December 2025. The discretionary denial rate for cases subjected to new briefing rose to 60% as of November 2025.
Big Tech and serial challengers turned to a less adversarial but still very effective mechanism called ex parte reexamination.
Ex parte reexamination filings skyrocketed to 223 in Q1 FY2026 alone. That’s an annualized rate of nearly 900 filings, compared to 407 in FY2024 and 495 in FY2025.
Director Squires explicitly cited this “recent increased volume” as the driving factor behind the procedural change.
Sometimes challengers repackaged the same IPR petition denied by the USPTO and submitted it as an ex parte reexamination petition. And it worked.
The USPTO saw this loophole and moved to close it.
The Amazon v. Croga Example: How the Loophole Worked
Here’s a concrete example.
Amazon filed an IPR petition against Croga Innovations. The USPTO denied it, noting that the patent had already been subject to four reexamination requests and it wasn’t appropriate to use office resources to challenge the patent again.
Amazon repackaged that denied IPR petition and filed it under an ex parte reexamination challenge. Same prior art. Same arguments.
It was instituted.
Under the new pre-order response rule, the patent owner can now argue that the art is cumulative because it was subject to an earlier petition that was rejected. The argument carries weight once the examiner realizes the petition over the same art was already rejected by the director in an IPR due to numerous serial challenges.
The new rule gives the patent owner a voice before institution. I suspect we’ll see a drastic decrease in ex parte reexamination institutions as a result.
What the 30-Day/30-Page Window Actually Means
Let’s get tactical.
Patent owners may now file a “pre-order paper” without a petition or fee within 30 days of service of the reexamination request. The paper is limited to 30 pages and must focus on why the cited references do not raise a substantial new question of patentability.
The 30-day deadline is not extendable. It coincides with the first month of the statutory three-month substantial new question determination period.
If the patent owner files a pre-order paper, the requester may petition to file a responsive paper of up to 10 pages, which must be filed within 15 calendar days and accompanied by a fee.
Because requester replies might be uncommon, patent owners may gain a meaningful last-word advantage.
To accommodate this new procedure, Director Squires waived 37 CFR 1.530(a) and the second sentence of 37 CFR 1.540 under authority of 37 CFR 1.183, invoking “an extraordinary situation, when justice requires.”
The procedure is explicitly experimental. The Office stated it “will consider revisions to the rules” if the pre-order papers prove helpful.
Your Homework Starts Today, Not When You’re Challenged
The single biggest mistake I see patent owners make is treating this 30-day window like they can buy time.
You can’t.
The 30-day deadline is non-extendable. Your homework starts today, not when your patent is challenged.
Here’s what that means practically:
Secure capable patent counsel now. If you have serious patents you’re looking to enforce, you better believe a challenge will be coming. Have a strong patent firm on your side ready to jump in and defend you. Ideally, go with the firm who prosecuted your patent application. They know the history better than anybody else.
Line up your expert witnesses now. Expert declarations don’t count against your 30-page limit, so use them. You don’t want the examiner faced with a one-sided expert report. When an expert with a PhD in the field tells the examiner your invention is obvious, you better have an equally qualified expert to rebut that assertion.
Put your best foot forward. Spare no expense at this stage. You want to make sure the challenge fails before institution. Otherwise, you’ll be in for a likely long battle.
The Cost Difference: Front-Loading vs. Full Reexamination
Founders always have budget constraints. So let me give you the ballpark.
It’s hard to estimate patent prosecution costs once reexamination is ordered. It entirely depends on the number of rejections issued by the Office. It becomes a ping-pong match. You respond to one rejection, overcome it, and the examiner issues another rejection over another reference.
Once the substantial new question determination is made by the examiner, it may be hard to overcome that rejection. We’re all human and no one wants to be proved wrong. Examiners are no exception. That psychological effect is playing in the background.
Budget roughly:
Lower end (~$40k–$60k): Light amendment strategy, limited Office Actions
Middle range (~$60k–$90k): Typical CRU prosecution with amendments and argument
Higher end (~$90k–$120k+): Multiple Office Actions, complex amendments, appeal-adjacent briefing
If you can get the response filed within a $20k–$40k budget and prevent the substantial new question determination, you not only save money but you save significant time.
What Actually Works in That 30-Page Response
Your response is limited to why the asserted references don’t raise a substantial new question of patentability.
Focus on:
Why the cited references are cumulative over the art that has already been considered and is part of the record.
Why the combination teaches away from the invention.
Why the cited references alone or in combination fail to teach various features of your invention. Put your strongest argument first, then move forward with other more nuanced distinctions.
What doesn’t matter at this stage:
• Whether the USPTO should use its discretionary powers to reject the petition (that determination is made later)
• Detailed motivation-to-combine analysis
• Teaching away beyond what is needed to show no substantial new question
• Over-engineering claim construction fights
• Full 103 framework (Graham-factor style)
• Secondary considerations
• Anything that assumes sustained prosecution
Reserve those for later if the substantial new question determination is made against you.
When Patents Still Don’t Matter Despite the New Rules
All the procedural changes in the world will not save a patent that doesn’t provide a strategic advantage.
If your patent doesn’t cover the core aspect of your technology—the features competitors care about when it comes to enforcing it—all the procedural changes won’t provide you with the leverage you need.
It’s still important for founders to prepare quality applications with an eye toward enforcement and investor due diligence.
We don’t live in the era where patent filing alone was enough. Now investors want to know what you filed, why you filed it, what the strategy was behind it, who the competitors are, what the competitor patent landscape looks like. Did you do a patentability search? Did you do a freedom-to-operate investigation?
I recently attended an investor interview with one of our startup clients. All the questions we anticipated came up and the founder was ready to answer them. When you get into a room and ask for serious money, you better be ready because the investors will have seasoned attorneys to review your patent portfolio. If it wasn’t drafted strategically, it won’t change the conversation.
The 4-Question Framework: Evaluating Your Existing Portfolio
A founder comes to you with an existing patent portfolio—maybe 3-5 patents issued over the last few years. They want to know if these patents just became more valuable under the new rules.
Here’s the evaluation framework I use:
First, do your patents actually claim the core innovation that defines your competitive advantage, or are they peripheral features?
Second, are the claims broad enough to cover competitor workarounds, or are they so narrow that design-arounds are trivial?
Third, does your portfolio protect your current product roadmap and business model, or just technology you’ve already moved past?
Fourth, can you afford to enforce these patents if challenged? Stronger procedural protections only matter if you’re willing to litigate.
If they pass these tests, the new rules are a huge win. But if there are gaps in coverage or enforceability, procedural changes won’t save a fundamentally weak portfolio.
What This Means for Licensing, M&A, and Fundraising
When patents become harder to kill, investors are more willing to invest in them or in the company behind them.
They know their investment is safe. That their investment won’t be easily knocked out by bigger companies when it comes to enforcement.
Seasoned investors and bigger companies with strong IP representation already know this. They’re paying attention.
Average patent awards were significantly up in 2025 compared to 2024. In 2024 alone, U.S. patent juries awarded over $4.3 billion in damages, with average jury verdicts at record highs.
NPE litigation was significantly up in 2025 compared to 2024 by some 30%, and 2026 proves no exception. Recent software patent cases have produced significantly over $10 million jury awards.
Example: Anonymous Media Research v. Samsung in the Eastern District of Texas resulted in a $78.5 million jury award in September 2025 for media usage and automatic content recognition technology in smart TVs.
We’re seeing big numbers, and the changes at the USPTO only strengthen patents as monetizable assets.
That’s why investors ask founders if they have a patent. A number of founders I deal with come to us because the investor told them to get a patent and come back.
The same scenario plays out in licensing negotiations with big companies. They can no longer take the posture of “sue me, I’m going to invalidate your patents with IPR/EPR.” The days of serial challenges to patents to oblivion are gone.
Now they have to entertain licensing negotiations or risk being exposed to expensive litigation.
A Client Story: When the Notice of Allowance Flipped Everything
I once represented a patent owner who had nothing but issued patents. The patents were strategically developed, and when licensing negotiations failed with big companies, the big companies challenged the patents under ex parte reexamination.
Substantial new question was instituted.
You could tell all of the client’s money was tied up with these patents. They didn’t have enough to pay our legal bills at the time, but luckily we were able to secure a notice of allowance for them without claim amendments to their patents.
As soon as the notice of allowance was issued, the licensing deals started coming.
They happily paid our legal bills, which were significant. It was wonderful to see and feel that their innovation and hard work paid off.
Some argue that NPEs are bad. I ask why. They own a property right—a patent. Why can’t they enforce it? It’s like saying a landlord who intends to rent the house he buys or the lands he develops is bad. There’s nothing bad about it. That’s how property rights work.
Where Patent Policy Goes From Here
In the next 2-3 years, I don’t anticipate the pendulum swinging back.
With the number of challenges to patents decreasing as a result of their lack of effectiveness, we’ll see more resources directed to cases on appeal. We’ll see the appeals pending for patent applications under examination decrease significantly—a trend already emerging.
However, once a new administration comes in, depending on who replaces the existing directors, we may go back to an era more favorable to patent challengers and big corporations.
The patent system used not to be political, but with the introduction of these post-issuance challenges, it has become political. Whoever heads the office has enormous powers on the enforceability or lack thereof of patents.
I also believe we’re going to enter a new era of examination. The next shift will be the use of AI in examination of cases. I believe we’re going to see further guidance on patent eligibility rejections, which are still being issued at the USPTO at an alarming rate and with no consistency despite recent guidance.
I recently attended a seminar on USPTO use of AI, and I was pleased to hear that within the next months we’re going to see AI tools that help examiners provide better examination of cases on both patentability and patent eligibility grounds. I believe these AI tools will be better able to review case law and USPTO guidance and guide the examiner in issuing or not issuing patent eligibility rejections.
The Signal Is Clear: Stronger Patent Rights Are Here
The bigger picture is that we’re moving to an era of stronger patent rights.
The signal continues to be the same from the USPTO: once we issue a patent, we’re going to stand behind it, and it’s not so easy to invalidate it.
When the USPTO effectively closed the challenge to patents under IPR, the challengers pivoted. They turned to another less adversarial mechanism but still very effective—ex parte reexamination—to continue challenging granted patents.
The USPTO saw this loophole and is attempting to close it with the new rules.
The procedural changes directly attack the heart of challengers’ ammunition. It disarms the very tools they’ve been using for the past decade to invalidate patents. Take those tools away, and they’re left with what has been the tradition: challenging issued patents in courts.
Challengers argue these mechanisms should exist to get rid of bad patents, but I’ve never seen them define what constitutes a bad patent. Does the patent continue to be bad when you challenge it at the USPTO and you lose, or do you now concede that the patent wasn’t bad?
It’s extremely difficult to say whether a patent is bad or good. The standard for patentability is not black and white, and reasonable examiners, judges, and patent attorneys may differ on that outcome.
Therefore, if you challenge a patent long enough at a patent office, the odds are in your favor to win.
That door is closed now.
For founders who’ve watched Big Tech use IPR to invalidate patents at 80%+ rates, this is the first real defensive tool in a decade.
The 30-day window matters. Use it.
For a broader analysis of how patent challenges are changing, see our full breakdown here → [link]
