Electronic Service in Patent Reexamination: Why the USPTO Should Adopt the IPR Model
Executive Summary: The USPTO should amend its reexamination rules to expressly permit electronic service by agreement, following the model already established for inter partes review. Although reexamination papers may be filed electronically, 37 C.F.R. § 1.248 provides no express electronic-service option, and the Central Reexamination Unit has publicly explained that its transmission provision permits first-class mail but excludes email and facsimile. This framework creates duplicative handling costs and can reduce meaningful response time because mailed service becomes effective before the recipient receives the documents. The Office’s new, nonextendable pre-order response periods make prompt access especially important. A carefully designed amendment should cover both initial requests and subsequent submissions, require written consent and designated service addresses, ensure access to the complete service set, and establish clear rules for completion, failed transmissions, and corrective delivery. Existing service methods should remain available when consent is absent. Coordinated amendments and corresponding updates to USPTO guidance would improve efficiency and procedural certainty while preserving reexamination’s existing participation limits and notice protections.
Introduction
A lawyer can electronically file a request for ex parte reexamination with the United States Patent and Trademark Office and still face a service rule built around physical delivery. The Office permits electronic filing of reexamination requests and appropriate subsequent submissions, but the rule governing service between the patent owner and third-party requester lists personal delivery, delivery at a business or residence, first-class mail, and, in exceptional circumstances, publication. It contains no express authorization for electronic service by agreement. U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 2224 (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP]; 37 C.F.R. § 1.248(a)(1)–(5) (2026).
The USPTO should close that gap. Its inter partes review rules already supply the essential model: parties may agree to electronic service, with a prescribed delivery alternative when they do not. 37 C.F.R. §§ 42.6(e)(1), 42.105(b) (2026). Extending that express permission to reexamination would reduce unnecessary handling, improve access to served materials, and give practitioners a clear basis for treating an electronic transmission as legally effective service. A consent-based amendment would also preserve existing delivery methods for patent owners and requesters who need them.
The Existing Service Framework
The service obligation begins with the request. A third-party requester must serve the entire request on the patent owner at the correspondence address provided under § 1.33(c), and the request must include the required certificate of service. 37 C.F.R. § 1.510(b)(5) (2026). Electronic filing with the Office does not itself satisfy that separate obligation. The distinction matters because uploading a request into an agency system and providing legally effective notice to the patent owner serve different functions. A modern rule should address both functions expressly, without assuming that a searchable public record substitutes for service.
The obligation continues after the request. In a proceeding arising from a third-party request, documents filed by the patent owner or requester must be served on the other party in accordance with § 1.248 and must reflect that service; the Office may refuse to consider a document that does not. 37 C.F.R. § 1.550(f) (2026). The requester's limited ability to participate does not eliminate the owner's continuing service obligation. Ordinarily, active requester participation ends with the reply to the patent owner's statement, subject to the regulation's specified exceptions. Id. § 1.550(g). Reexamination can therefore remain ex parte in its examination phase while requiring continuing delivery of papers to the requester.
Section 1.248 specifies the mechanics. Service must be made on the party's attorney or agent when one represents the party. The rule authorizes delivery to the person, qualifying delivery at a business or residence, and first-class mail; publication requires a showing satisfactory to the Director that other methods are impracticable. Mailing fixes the date of service. Id. § 1.248(a)(1)–(5). The transmission provision expressly identifies first-class mail; it does not enumerate email or facsimile. These transmission restrictions coexist with the rule's separate physical-delivery methods.
The CRU directly addressed whether email qualifies as service during the Q&A portion of the USPTO's February 18, 2026 webinar. Stephen J. Stein, the CRU's Management Quality Assurance Specialist, explained that § 1.248 permits transmission by U.S. first-class mail and separately recognizes personal service. He then stated: “However, for service by transmission, it is limited to 1st class mail.” Stein went on to explain that email, facsimile, and other transmission methods are not permitted under § 1.248. U.S. Pat. & Trademark Off., USPTO Hour: Central Reexamination Unit, at 1:01:43–1:02:46 (Feb. 18, 2026) (remarks of Stephen J. Stein; quoted statement at 1:02:28), https://www.youtube.com/watch?v=A5jQaiZJpA8&t=3728.
The exchange makes the CRU's stated practice concrete. Stein did not identify an exception for electronic service by agreement in that answer. His explanation strengthens the case for putting an electronic-service option directly into the regulation, where practitioners could identify both the permitted methods and the effect of consent. Although a webinar explanation does not itself amend the rules, it gives parties a practical reason to seek express regulatory authorization before treating an email exchange as sufficient service. An IPR-style amendment would provide that authority and reduce the need to send a duplicate physical service set merely to avoid a compliance dispute. Compare 37 C.F.R. § 1.248(a) (2026), with id. §§ 42.6(e)(1), 42.105(b).
The consequences of defective service make certainty valuable. For the initial request, compliance with the service requirement affects the filing date: the request receives a filing date when it satisfies the requirements of § 1.510, including the service certification. 37 C.F.R. § 1.510(b)(5), (d) (2026). Stein emphasized that consequence earlier in the webinar. USPTO Hour: Central Reexamination Unit, at 27:58–29:11. For later submissions, the MPEP distinguishes a missing certificate where service actually occurred from a failure to serve the paper. The latter ordinarily leads to nonentry and an opportunity to cure, while practice after final rejection is more restrictive. An uncured defect can prevent consideration of the submission and, where the owner has not otherwise adequately responded, can lead to termination of prosecution. MPEP §§ 2266.02–2266.03; see also 37 C.F.R. § 1.550(d), (f) (2026). A service amendment would give parties a reliable additional way to discharge the obligation before those problems arise.
Why Service Timing Matters
The Office's new pre-order procedure makes the issue more immediate. For requests filed on or after April 5, 2026, the procedure allows a qualifying patent-owner submission before the substantial-new-question determination. That paper is due no later than thirty days after service of the request. A requester may submit a responsive paper only under the notice's exceptional procedure, accompanied by a grantable petition under § 1.182 and the required fee; its deadline is fifteen calendar days after service of the owner's paper. Neither period is extendable, and the papers remain subject to § 1.248 service requirements. Pre-Order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings, 1545 Off. Gaz. Pat. Office 217, 218 (Apr. 28, 2026) [hereinafter Pre-Order Procedure].
When first-class mail is used, the service date is the mailing date, rather than the date the recipient receives the materials. 37 C.F.R. § 1.248(a)(4) (2026). Suppose a request reaches the patent owner's correspondence address five days after mailing. Those five days have already consumed part of the thirty-day pre-order response period. Electronic service, when agreed upon and successfully completed, could give counsel access to the same materials much closer to the moment the clock starts. Aligning usable notice with the start of that short, fixed response period would help the recipient make effective use of the opportunity.
What Reexamination Should Borrow from IPR Practice
IPR practice offers a useful comparison precisely because its electronic-service rule is modest. Section 42.6(e)(1) states: “Service may be made electronically upon agreement of the parties.” 37 C.F.R. § 42.6(e)(1) (2026). Without agreement, the rule calls for Priority Mail Express or a method at least as fast and reliable. Id. The surrounding provisions address simultaneous service and filing, service on counsel, and certificates identifying the date, manner, and recipients of service. Id. § 42.6(e)(2)–(4). Electronic service thus operates within an established framework for identifying what was delivered, when, and to whom.
The IPR rules also address the initiating petition separately. Section 42.105 specifies where the petition and supporting evidence must be served and expressly permits electronic service by agreement. Id. § 42.105(a)–(b). That distinction should carry over to reexamination. Permission to email later submissions does not, by itself, resolve how a requester may serve the paper that first alerts an owner to the proceeding. Any amendment should cover the initial request and later papers while requiring actual agreement before electronic service replaces the otherwise applicable delivery method.
The broader benefits are straightforward. Where both sides work from electronic files, printing, assembling, packaging, and mailing an additional service set imposes expense without necessarily improving their ability to review the submission. Electronic delivery can preserve searchable text and make the same complete set available to everyone who must analyze it. The savings will vary with the size of the record and the parties' practices. Even where the immediate savings are small, willing recipients should be able to choose a reliable method suited to the documents they use.
Clear rules would also improve administration. A defined electronic-service method would allow a certificate to identify designated addresses, the transmitted files, and the transmission date, giving the Office a more concrete basis for resolving a service dispute. The Office could focus on whether the parties consented and complied with specified delivery requirements. That objective is consistent with Congress's direction that reexamination proceedings receive “special dispatch.” 35 U.S.C. § 305. Prompt access to served materials is a practical step toward that objective.
Designing a Reliable Electronic-Service Rule
The amendment should begin with written consent. Each recipient should designate the email addresses authorized to receive service, with counsel acting for a represented party. The agreement should identify the proceeding and whether it covers the initial request, later papers, or both. The consent and any subsequent change should be documented in the record. A professional email address appearing on a website or in another matter should not be treated as consent to service in a newly initiated reexamination. If consent has not been obtained, the existing service requirements should govern.
As a starting point for rulemaking, the operative provision could read:
Service may be made electronically upon the written agreement of the serving and receiving parties. The agreement must identify the electronic addresses designated for service and the documents or proceeding it covers. Absent such agreement, service must be made as otherwise provided in this chapter.
That proposed language would need conforming provisions governing the initial request, certificates, completion of service, and failed transmissions. Its central choice is narrow: electronic service becomes an expressly authorized option when the affected parties have agreed to use it.
The rule should require delivery of the complete service set. An email identifying a filing without providing access to its contents should not suffice. For attachments, the serving party should identify the files and confirm that they correspond to the materials being served. For a record too large for ordinary attachments, the rule should permit an agreed secure download method with an index, functioning access instructions, and a defined period of availability sufficient for the recipient to retain the files. The recipient should be able to download a stable copy without purchasing an account or depending on a link that may disappear before the materials can reasonably be retrieved.
Completion and failure rules deserve equal attention. The Office should specify when electronic service is complete, which time zone controls, and how the service date is reported. Successful transmission to the designated addresses could supply the ordinary completion rule, subject to correction where the sender learns that delivery failed or that the files were inaccessible. A known failure should trigger prompt retransmission or use of an authorized alternative, and the governing response period should run from effective service. The rule should also explain how recipients raise a credible failure claim and what evidence the Office will consider.
These protections should not make acknowledgment a prerequisite to service. Otherwise, a recipient could control the start of a deadline simply by declining to respond. Transmission records, preserved service copies, and a certificate should ordinarily establish the relevant facts, while a specific failure can be addressed on its evidence. Consent withdrawals should take effect prospectively after specified notice, so a party cannot invalidate an earlier transmission by changing its instructions after service. These details are proposed safeguards for reexamination, rather than a description of requirements already imposed by the IPR rules.
The strongest objection concerns the owner who does not know that a request is coming. That concern supports preserving existing service methods absent consent and retaining the correspondence-address protections for the initial request. It does not justify withholding an electronic option from an owner who has affirmatively designated counsel and agreed to receive the request electronically. A general requirement to monitor the Office's electronic docket would raise a different question. The reform proposed here depends on an agreed delivery channel and actual transmission of the service set.
Email failures and cybersecurity concerns likewise warrant safeguards rather than a categorical exclusion. Parties should be able to specify attachment limits, approved secure-transfer systems, and backup contacts before electing electronic service. They should retain records sufficient to demonstrate what was sent and promptly correct known delivery failures. The consent requirement gives a recipient who cannot reliably use the proposed method a reasoned basis to decline it. It also avoids forcing the Office to create a universal electronic-service platform before adopting a useful procedural improvement.
Nor would the amendment change the limited role of a third-party requester. Delivery of a paper and permission to respond to it are distinct procedural questions. Express electronic service would leave the restrictions in § 1.550(g) and the exceptional nature of a pre-order requester response intact. 37 C.F.R. § 1.550(g) (2026); Pre-Order Procedure, 1545 Off. Gaz. Pat. Office at 218. The Office can modernize how authorized papers reach their recipients while preserving the structure of ex parte examination.
Implementing the Reform
The USPTO has an available rulemaking path. Congress authorized it to issue regulations governing proceedings in the Office, consistent with law and in accordance with the Administrative Procedure Act. 35 U.S.C. § 2(b)(2)(A)–(B). The reexamination statutes require the Director to send a third-party request to the owner and require service of the owner's statement and the requester's reply, but they do not prescribe paper delivery for those exchanges. Id. §§ 302, 304. A carefully drawn amendment permitting electronic service by agreement would address a procedural method within that framework.
The Office should pursue notice and comment to obtain practical input on consent, large records, and delivery failures. See 5 U.S.C. § 553. Targeted changes to §§ 1.510(b)(5) and 1.550(f), with corresponding treatment of pre-order submissions, could implement the reform specifically for reexamination. Alternatively, amending § 1.248 could supply a broader electronic-service provision, but that approach would require considering other proceedings governed by the rule. In either event, the MPEP, service-certificate guidance, and relevant forms should be updated together so practitioners receive one consistent instruction.
Electronic service by agreement is a practical reform with a workable model already in the USPTO's rules. The CRU's public explanation of the existing transmission requirement gives the Office a concrete reason to address the issue in its regulatory text. Its value is clearest when a complete electronic record must reach counsel quickly enough to permit a meaningful response. The Office should make the option explicit, preserve existing methods when consent is absent, and define the safeguards that make electronic delivery dependable. Patent owners and requesters should be able to devote their time to the merits of reexamination with confidence that an agreed electronic transmission satisfies the duty to serve.
