Seeking Discretionary Denial in Ex Parte Reexamination: Patent owner timing and procedure

Executive Summary: Section 325(d) permits the USPTO to reject an ex parte reexamination request that presents the same or substantially the same art or arguments previously presented to the Office, but repetition alone does not establish an entitlement to relief. For patent owners, the central procedural question is when and how to invoke that discretion. The April 2026 procedure excludes § 325(d) arguments from the newly authorized pre-order paper and creates no separate opportunity for discretionary-denial briefing before issuance of the reexamination order. The ordinary practical course is therefore to prepare the argument upon service of the request and file a separate supervisory petition promptly after reexamination is ordered, addressing any applicable filing restrictions and necessary waivers. For a petition challenging the grant, the two-month period under 37 C.F.R. § 1.181(f) runs from the order’s mailing date; later petitions risk dismissal as untimely. Exceptional pre-order consideration remains a matter for a separately supported petition and waiver request, without an entitlement to consideration under the April notice. The supervisory petition remains distinct from an optional patent-owner statement or examination response, and its filing does not suspend prosecution deadlines. Effective presentation combines a precise comparison of the earlier and current records with the correct procedural vehicle and timely preservation of the issue.

Introduction

 

A patent owner served with an ex parte reexamination request may immediately recognize the references, the proposed combinations, or even entire passages of the requester’s arguments. That familiarity presents a practical question: when can the owner ask the United States Patent and Trademark Office to decline another examination under 35 U.S.C. § 325(d)? The answer depends on the proceeding’s stage and the procedural vehicle used to put the issue before the Office.

The reexamination order is an important procedural dividing line, but it does not extinguish the Office’s authority to reconsider its decision. In re Vivint, Inc., 14 F.4th 1342, 1351⁠–⁠52 (Fed. Cir. 2021). Before an order, a patent owner must navigate restrictions on unsolicited submissions and distinguish a request for permission to file from the request for discretionary relief itself. After an order, the owner may seek reconsideration through a properly supported supervisory petition while continuing to meet prosecution deadlines. Treating those tasks separately can determine whether the Office reaches the objection at all.

The statutory question must be identified precisely

 

Section 325(d) expressly reaches proceedings under chapter 30, which governs ex parte reexamination. It authorizes the Director to reject a request based on the same or substantially the same prior art or arguments previously presented to the Office. 35 U.S.C. § 325(d). Its discretionary inquiry differs from the threshold determination whether the request raises a substantial new question of patentability under § 303(a). Indeed, previously cited or considered art does not necessarily prevent a substantial new question from existing. 35 U.S.C. § 303(a).

The statutory inquiry is not limited to repeated challenges by the same requester or to art previously addressed in a denied IPR petition. The relevant comparison concerns what was previously presented to the Office. Establishing that overlap, however, does not by itself establish an entitlement to discretionary rejection. 35 U.S.C. § 325(d).

That distinction matters to both substance and procedure. An owner seeking discretionary rejection of a repetitive challenge must identify the relief requested. An argument that a reference fails to disclose a claim limitation, or that the asserted question was already decided, may instead challenge patentability or the substantial-new-question determination. Overlapping facts do not make those objections procedurally interchangeable. The relief sought determines the procedural channel for each objection.

Entry of an objection before the order requires separate attention

 

The ordinary rules do not supply an unrestricted patent-owner response to a third-party request before the Office acts. Section 1.530(a) generally prohibits a pre-determination response, subject to its stated exception, and § 1.540 separately restricts submissions before examination begins. 37 C.F.R. §§ 1.530(a), 1.540 (2026). Merely labeling a merits opposition as a § 325(d) submission does not establish a right to its entry.

A separately authorized petition route has been used. Section 1.182 permits the Office to decide situations not specifically provided for in the regulations, while § 1.183 permits waiver of nonstatutory requirements in an extraordinary situation when justice requires. 37 C.F.R. §§ 1.182⁠–⁠.183 (2026). Those provisions provide the basis for requesting exceptional treatment of a pre-order § 325(d) objection. They do not create an unconditional right to have that objection entered or decided before the order.

An April 2025 proceeding, predating the April 2026 procedure discussed below, illustrates the distinction between permission to submit an objection and discretionary relief. In the reexamination of U.S. Patent No. 9,338,140, the owner filed a § 1.182 petition seeking rejection under § 325(d), accompanied by a § 1.183 request to waive §§ 1.515(a) and 1.540. The Office granted the waiver, and the Central Reexamination Unit addressed the entered § 325(d) submissions in its subsequent order, while excluding arguments directed to claim patentability. Ex Parte Reexamination of U.S. Patent No. 9,338,140, Control No. 90/019,836, Order Granting Reexamination at 10⁠–⁠11 (U.S. Pat. & Trademark Off. Apr. 16, 2025). This earlier practice does not establish a right to entry or favorable discretionary treatment under the April 2026 procedure.

A complete filing distinguishes the request for permission to submit the objection from the request for discretionary rejection. The waiver request identifies the rules that would otherwise bar consideration and explains why the circumstances justify their waiver. That analysis addresses the restrictions applicable to the particular proceeding. The discretionary request explains the basis for exercising § 325(d) discretion and states the requested disposition. Permission to submit the argument is only the first step; it does not establish entitlement to rejection of the reexamination request.

A focused substantive presentation enables the decisionmaker to compare the records without reconstructing the patent’s entire prosecution history. A useful submission identifies the earlier Office presentation and any resulting disposition, maps each current ground to the earlier art and arguments, and addresses changes in claim scope, combinations, asserted teachings, or supporting evidence. Pinpoint citations are more persuasive than a collection of earlier briefs accompanied by a general assertion that the current request repeats earlier material.

Consider, for example, a request that substitutes a different secondary reference while retaining the same primary reference and the same explanation for combining the teachings. The comparison addresses the substituted reference’s actual role and why the change does or does not matter to the asserted repetition. Conversely, an argument that relies only on overlapping reference names leaves unanswered whether the requester has presented a materially different theory. The objective is to make the discretionary choice concrete, including the strongest reason the requester may offer for renewed examination.

Speed matters. The statute gives the Office three months after filing of the request to make the substantial-new-question determination; it does not promise the owner a three-month preparation period. 35 U.S.C. § 303(a); 37 C.F.R. § 1.515(a) (2026). Prompt review enables the owner to assess whether to request exceptional pre-order treatment; the statute supplies no entitlement to that treatment. An intervening order changes the procedural posture and may require a revised request for relief; the pending filing does not automatically become a challenge to that order.

The new preliminary paper does not authorize a discretionary denial opposition

 

The Office’s April 2026 procedure permits a limited patent-owner paper for requests filed on or after April 5, 2026. The paper is capped at thirty pages and must be filed within thirty days after service of the request, without extension. A compliant paper receives specified rule waivers without a separate petition or fee. Pre-Order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings, 1545 Off. Gaz. Pat. Office 217, 217⁠–⁠18 (Apr. 28, 2026).

The notice excludes § 325(d) arguments and places that discretionary consideration after the substantial-new-question determination. It also excludes arguments that the asserted teaching is not new, reserving them for a patent-owner statement or an Office-action response. Id. at 217⁠–⁠19. The notice’s automatic waiver does not authorize a § 325(d) submission. Whether the Office will entertain an exceptional, separately supported petition and waiver request before issuing the reexamination order remains a distinct procedural question; the notice itself provides no entitlement to that consideration.

Section 304 links an affirmative substantial-new-question determination to the reexamination order: the determination includes the order directing reexamination. 35 U.S.C. § 304. The notice does not establish a distinct intervening stage for discretionary-denial briefing between that determination and issuance of the order.

The two filings serve distinct purposes. A compliant pre-order paper addresses the matters the notice permits. Any separately requested § 325(d) submission needs its own procedural justification. Separation is also a regulatory requirement: § 1.4(c) requires distinct subjects, inquiries, or orders to be presented in separate papers. MPEP § 1002 applies that principle to petitions and explains that a petition ordinarily proceeds under a single authorizing provision. 37 C.F.R. § 1.4(c) (2026); U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 1002 (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP]. The relevant distinction concerns separate requests or subjects, including permission to submit an objection and the discretionary relief requested; citing multiple regulations does not alone require multiple documents.

After the order the owner may seek reconsideration and termination

 

Vivint rejects a categorical rule that § 325(d) relief must be sought before reexamination is ordered. The Office retains reconsideration authority. 14 F.4th at 1351⁠–⁠52. On the particular record of serial challenges and a reexamination request substantially repeating a previously rejected abusive challenge, the court held that the Office acted arbitrarily and capriciously and directed dismissal. Id. at 1353⁠–⁠54. The court emphasized the narrowness of that holding and preserved the Director’s separate authority to initiate reexamination. Id. Thus, an earlier IPR denial alone does not establish an entitlement to termination.

For a post-order challenge, § 1.181(a)(3) supplies the familiar supervisory-petition mechanism. The petition must identify the relevant facts, the points for review, and the action requested, with evidentiary support where necessary. 37 C.F.R. § 1.181(a)(3), (b) (2026). At that stage, a petition may request reconsideration and vacatur of the order, and termination of the proceeding to the extent warranted by the asserted grounds. A filing that merely asks the examiner to reconsider the prior art may fail to present the separate discretionary question clearly.

Issuance of the order does not necessarily remove every filing restriction. Before the first examination action, § 1.540 may still require attention. In In re Frankland, the Office granted a § 1.183 waiver of that rule after the reexamination order but before the nonfinal merits action, and treated the termination request as a supervisory petition under § 1.181. Reexamination Control No. 90/019,070, Decision on Petitions at 5 (U.S. Pat. & Trademark Off. May 26, 2023). That decision ultimately terminated the proceeding under § 315(e)(1) estoppel and treated the remaining grounds as moot. Id. at 11. It illustrates the procedural route; it is not a substantive § 325(d) termination holding.

The Office’s prior rulings provide the starting point for organizing the petition. If the order expressly rejects a § 325(d) objection, begin with the stated reasons and identify the alleged factual or legal error. If the order does not address § 325(d), explain the discretionary issue that requires decision and supply the supporting record. An order’s silence does not establish that the Office considered and rejected every possible argument. When raised for the first time, the objection calls for a complete initial presentation; earlier patentability arguments do not necessarily present the discretionary issue.

For each posture, a persuasive petition connects the requested remedy to the challenged grounds and claims. If only some grounds repeat the earlier presentation, a demand to terminate the entire proceeding needs an explanation of why the remaining grounds do not independently support continuation. A claim of inconsistent agency treatment rests on the relevant earlier findings and an explanation of why the present circumstances call for the same treatment. The petition is strongest when it addresses the Office’s actual decision and the requester’s actual changes.

The initial submission also deserves particular care because further briefing is constrained. In Frankland, the requester’s opposition had a right of entry, but the owner’s additional merits rebuttal did not. Id. at 6; MPEP § 2267(II)⁠–⁠(III). A complete initial petition addresses foreseeable responses without depending on a later reply.

The petition deadline needs its own docket entry

 

For a § 325(d) petition seeking to vacate the grant of ex parte reexamination, the relevant date is the mailing date of the USPTO’s order granting reexamination. The period does not run from the filing or service of the reexamination request, or from the patent owner’s receipt of the order. The “challenged action or notice” is the Office’s decision from which relief is requested—in this situation, the grant of reexamination. A petition filed more than two months after that order’s mailing date may be dismissed as untimely, and the period is not extendable. 37 C.F.R. § 1.181(f) (2026).

The order also specifies a period of at least two months for an optional patent-owner statement under § 1.530(b). That statement period is separate from the petition period under § 1.181(f), even when the resulting dates coincide. Filing a statement does not itself constitute a petition for supervisory relief. 37 C.F.R. §§ 1.181(f), 1.530(b) (2026).

The word “may” leaves room for discretionary acceptance of a late petition, but that possibility is not an extension available on demand. MPEP § 1002 recognizes acceptance for an appropriate reason and requires the reason to be made of record. It also generally applies the same timeliness benchmark to petitions under §§ 1.182 and 1.183 when no other period governs. MPEP § 1002. A petition relying on later events identifies what changed and explains the timing; relabeling an existing objection does not establish a new triggering event.

For example, if the request is filed on April 20, 2026, and the order granting reexamination is mailed on June 10, 2026, the ordinary two-month petition deadline is August 10, 2026. The period is measured in calendar months, rather than sixty days. A later merits Office action does not automatically restart the period for challenging the original order. The limited pre-order paper has a separate thirty-day deadline measured from service of the request, as discussed above; that deadline does not govern a post-order § 325(d) petition.

The calendar calculation also accounts for § 1.7(a). If the last day falls on a Saturday, Sunday, or federal holiday within the District of Columbia, filing is permitted on the next day that is neither a Saturday nor a Sunday nor such a federal holiday. 37 C.F.R. § 1.7(a) (2026). This rule determines the permissible filing date; it is not a discretionary extension of the two-month period.

Prosecution continues while the petition is pending

 

Filing a supervisory petition does not stay the proceeding or suspend the response period. 37 C.F.R. § 1.181(f) (2026). Unless the Office grants appropriate relief, the owner must continue responding to examination actions. Failure to provide a timely and appropriate response can lead to terminated prosecution and a certificate reflecting the last Office action. 37 C.F.R. § 1.550(d) (2026). The practical consequence is straightforward: a potentially dispositive petition does not eliminate the need to defend the claims on the merits.

The ordinary route for contesting the substantial-new-question determination begins with examiner reconsideration, requested in a § 1.530 statement or an appropriate Office-action response. For reexaminations ordered on or after June 25, 2010, that request is a prerequisite to subsequent Board review of the issue with an appeal of claim rejections. The appeal brief presents the issue and supporting arguments under a separate heading and identifies the communication in which the owner first requested examiner reconsideration. MPEP § 2246(II).

MPEP § 2246(II) separately recognizes rare supervisory petitions challenging a reexamination order as ultra vires, under a demanding standard requiring “brazen defiance” of statutory authority. That exceptional procedure differs from ordinary disagreement with the substantial-new-question analysis. Its standard does not govern an ordinary request for § 325(d) discretionary relief.

A submission seeking supervisory relief remains distinct from an examination response presenting patentability arguments or requesting examiner reconsideration. The separate-paper requirement applies to those distinct subjects; identifying the discretionary issue within an examination response does not substitute for a petition requesting a supervisory ruling. 37 C.F.R. § 1.4(c) (2026); MPEP § 1002.

Routine filing requirements still matter. Papers must reflect service on the other party, and the applicable reexamination-petition fee is governed by § 1.550(i), which refers to § 1.20(c)(6), subject to specified exceptions. 37 C.F.R. §§ 1.20(c)(6), 1.550(f), (i) (2026). The relevant fee and filing requirements are those governing the particular reexamination petition.

Finally, make the administrative record intelligible to someone encountering it later. Identify the earlier submissions by proceeding, paper number, date, and page; include the relevant decisions; and distinguish the relief requested from the relief actually granted. If an adverse petition decision rests on a procedural defect, address that defect through an available procedure rather than treating a merits argument elsewhere in the file as a substitute for a ruling.

Preserving review does not promise immediate judicial intervention

 

Vivint reached the Federal Circuit after the Board affirmed the examination result; the court reviewed the § 325(d) issue under the Administrative Procedure Act. 14 F.4th at 1348, 1350⁠–⁠51. That history makes early record development valuable even when the owner cannot obtain immediate relief.

Mandamus is a demanding alternative. In the nonprecedential In re Sound View Innovations, LLC, the Federal Circuit denied a petition seeking to end reexamination, explaining that review after a final decision provided an adequate remedy and that the burdens of continued proceedings did not establish entitlement to the writ. No. 2022-161, slip op. at 3⁠–⁠4 (Fed. Cir. Nov. 22, 2022). The court did not finally resolve the underlying § 325(d) merits. Id. Preparing a record for later review remains valuable even when a petition does not halt the immediate expense of examination.

The procedural analysis begins with service of the request and changes when the Office issues an order. Supervisory relief and examination responses have separate docketing requirements. A precise comparison of the prior and current records, presented through the proper procedure, gives the Office an opportunity to decide the objection and supports later review.